WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. yanjicai AKA jicai yan
Case No. D2010-1708
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is yanjicai AKA jicai yan of Beijing, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <electrolux-bx.com> is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 8, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On October 9, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On October 13, 2010, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 8, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on November 10, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on November 17, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company incorporated in Sweden and the owner of registrations in more than 150 countries worldwide for the trade mark ELECTROLUX, (the “Trade Mark”), including in China, where the Respondent is based. The Complainant has also registered almost 700 gTLDs and ccTLDs worldwide containing the Trade Mark, including <electrolux.com>, <electrolux.net>, <electrolux.info>, <electrolux.com.hk> and <electrolux.com.cn>.
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on May 23, 2010.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a world leading producer of appliances and equipment for kitchens and for cleaning, both for home use and for professional use, selling more than 40 million products to customers in 150 countries every year. The Complainant’s products sold under the Trade Mark include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers (the “Goods”). In 2009, the Complainant had sales of SEK 109 billion and 51,000 employees.
Due to its extensive and long-term use on products and services of the Complainant and the Complainant’s substantial expenditure on advertising, the Trade Mark has become a well-known mark in respect of the Goods.
The disputed domain name is confusingly similar to the Trade Mark. The use of a hyphen and the suffix “bx” does not have any effect on the confusing similarity. “Bx” may be a reference to the city of Benxi in China which, according to the website to which the disputed domain name is resolved (the “Website”), is a city near the company operating the Website.
The Respondent has no trade mark rights in respect of the disputed domain name and has not been licensed or authorised by the Complainant to use the Trade Mark.
The operator of the Website falsely claims to be an Electrolux company. The Website features the Trade Mark and the Electrolux logo as well as the wording “Electrolux Copyright 2010. All rights reserved”.
The Website has the look and feel of a website operated by the Complainant. It offers for sale the Goods under the Trade Mark. By its use of the disputed domain name and the Website, the Respondent is tarnishing the Trade Mark and seeking to sponge off the Trade Mark.
The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith to intentionally attract users, for commercial gain, to the Website, by creating confusion with the Trade Mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant sent the cease and desist letter in English, and the Respondent did not respond, neither to reply to the issues raised in the letter, nor to state that the Respondent does not understand the content. If the Respondent had not understood the content of the cease and desist letter, the natural thing would have been to send a short email stating that the Respondent did not understand the content of the letter;
(2) There are English words on the Website, “Electrolux Copyright 2010. All rights reserved”, so the Respondent is most likely familiar with the English language;
(3) It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
All of the Center’s communications to the Parties have been transmitted in both English and Chinese. The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. Had the Respondent made cogent submissions to the effect that it does not understand the English language, the Panel would likely have decided the language of the proceeding should be the language of the registration agreement.
However, in exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Although there is some use of English on the Website, the Panel makes no finding as to whether it is likely that the Respondent is conversant and proficient in the English language.
Having considered all the matters above, and given in particular the Respondent’s failure to file a Response or make any submissions with regard to the language of the proceeding, and in order to prevent further delay and translation costs on the part of the Complainant, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In the present case, the Panel concludes that the addition of a hyphen and the non-distinctive suffix “bx” does not serve to distinguish the disputed domain name from the Trade Mark in any way. The Panel makes no finding as to what this suffix is intended to stand for. Whether or not the suffix has any particular meaning is not strictly relevant to the question of confusing similarity. By far the predominant part of the disputed domain name is the Trade Mark and the hyphen and the suffix do very little to distinguish the disputed domain name from the Trade Mark, regardless of the meaning of the suffix (if any).
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. There is therefore a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It is clear that the Website is being used in order to pass off the business of the Respondent (or the business of the operator of the Website) as a business of or licensed by the Complainant, as evidenced by the blatant and prominent use of the Trade Mark and the Electrolux logo on the Website, as well as the copyright disclaimer. The operator of the Website operates in the same industry as the Complainant and the Website offers for sale the Goods.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to respond to the Complainant’s letter of demand and to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <electrolux-bx.com> be transferred to the Complainant.
Dated: November 26, 2010