WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Andrew Scherer
Case No. D2010-2024
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Group, Sweden.
The Respondent is Andrew Scherer of Bridgeport, Connecticut, United States of America.
2. The Domain Name And Registrar
The disputed domain name <electroluxergorapido.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2010. On November 24, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 24, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied 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 proceedings commenced on November 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on January 18, 2011. 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 Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919 and is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant is also one of the largest producers in the world of similar equipment for professional users, and also the market leader in many of the individual product categories in which the Complainant competes.
The Complainant sells more than 40 million products to customers in 150 countries every year. These products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE. In 2009, the Complainant had sales of SEK 109 billion and 51 000 employees.
The trademark ELECTROLUX has, due to extensive and long-term use on products and services of the Complainant and, in connection therewith, by tremendous costs incurred by the Complainant in connection with the production, distribution and advertising with respect to the products and services that are marked by the trademarks, acquired the status as a well-known trademark within the areas for appliances and equipment for kitchen, cleaning and outdoor products. As a result, the trademarks and the products and services designated by this trademark are connected with good reputation and international recognition.
The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the disputed domain name. The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these: <electrolux.com>, <electrolux.net>, <electrolux.info> and <electrolux.org>.
Evidence of the above statements has been provided to the Panel.
5. Parties’ Contentions
The Complainant makes the following contentions:
A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The dominant part of the disputed domain name comprises the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which, as stated above, has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. Evidence of which has been provided to the Panel.
The disputed domain name is confusingly similar to the trademark ELECTROLUX. The fame of the trademark has been confirmed in previous WIPO UDRP decisions, for example, AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777: “The first domain name in dispute, <electrolux-aeg-servisi.com>, adopts two of Complainant’s widely known trademarks”. The addition of the suffix “ergorapido” is not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark. Instead, the suffix “ergorapido”, which is the product name of one of the Complainant’s most popular products, is rather fitted to strengthen the impression that the disputed domain name is in some way connected to the Complainant. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of prefixes and suffixes.
The addition of the top-level domain (TLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is, therefore, irrelevant in determining the confusing similarity to the Complainant’s trademark ELECTROLUX.
Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark ELECTROLUX, there is a considerable risk that the trade public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using ELECTROLUX as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution of and other damage to the Complainant’s trademark.
To summarize, the Complainant is the owner of the world-wide registered trademark ELECTROLUX. The Respondent has registered the disputed domain name which is confusingly similar to the trademark owned by the Complainant. The addition of a generic term to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity.
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. It is also clear, that no license or authorization of any other kind to use the ELECTROLUX trademark, has been given by the Complainant to the Respondent.
In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” This has then been re-established in several cases after that, i.e. in Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488; and in Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh etc., WIPO Case No. D2003-0494.
The Respondent registered the disputed domain name on March 12, 2010. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. This Registration date is several decades after the world wide trademark registrations of the Complainant’s trademark ELECTROLUX.
The Complainant has also not found anything that would suggest that the Respondent has been using ELECTROLUX in any other way that would give him any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage. In Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated, WIPO Case No. D2001-0826, the panel was of the opinion that "the Respondent is not connected to the subject Domain Name either through its name or its business", which indicated lack of legitimate interest.
The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website where sponsored links are displayed. By doing this, the Respondent is misleading Internet users to a commercial website and, consequently, the Respondent is tarnishing the trademark ELECTROLUX. No evidence has been found that the Respondent uses the name as a company name or has any other legal right in the name ELECTROLUX. The site connected to the disputed domain name cannot be regarded as a site used for non-commercial criticism, as it is commercial.
The Respondent is trying to sponge off the Complainant’s world famous trademark. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the Panel stated that: “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
Referring to the above-mentioned contentions, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. The disputed domain name was registered and is being used in bad faith.
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The trademark ELECTROLUX, belonging to the Complainant, has acquired the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The awareness of the trademark is to be considered to be significant and substantial. The number of third party domain name registrations, comprising the trademark in combination with other words, has skyrocketed in the last years, and has given rise to many previous WIPO UDRP Cases. The considerable value and goodwill of the registered trademark ELECTROLUX is most likely to have largely contributed to this and also what has made the Respondent register the disputed domain name in the present case.
The Complainant first tried to contact the Respondent on June 17, 2010 through a ‘cease and desist’ letter, sent by email, a copy of which has been provided to the Panel. The Complainant advised the Respondent that the unauthorized use of the ELECTROLUX trademark within the disputed domain name violated the Complainant’s rights in the said trademark. The Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). The Respondent replied and agreed on a transfer and sent the authorization code to the Complaint. However, the authorization code was wrong and the transfer request from the Complainant was denied by the registrar. Therefore, the Complainant contacted the Respondent requesting him to send a new code. No response was received, despite three reminders sent in September and October, copies of which have, again, been provided to the Panel. Since the efforts of trying to resolve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
The disputed domain name is currently connected to a website containing sponsored links, evidence of which has been produced to the Panel. Consequently, the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages himself. In Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, the Respondent claimed that the website was created by the registrar, that he had no knowledge of the content and that he had actually not received any money from the website. The panel then stated that “these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i)paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” The use of sponsored links was also discussed in The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, the panel stated; “The record further reflects the Respondent's use of the disputed Domain Names to attract Internet users to the Respondent's website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.” These circumstances apply in the present case as well.
To summarize, according to the Complaint, there is no doubt that the Respondent was aware of the rights the Complainant has in the trademark ELECTROLUX and the value of the said trademark, at the time of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name, the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned contentions, the Respondent must be considered to have registered and be using the domain name in bad faith.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.
6. Discussion And Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous WIPO UDRP cases that, where a disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known and widely-registered trademark ELECTROLUX. The addition of the word ‘ergorapido’ is purely descriptive and does not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant’s registered trademark ELECTROLUX. See Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the [p]anel held that ‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services’. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
Also, the use of the word ‘ergorapido’, which, according to the Complainant, is the name of one of its “most popular” products, in the opinion of the Panel, appears to invest the disputed domain name with some degree of official association with the Complainant and, as such, is misleading and adds to the possibility of confusion.
Also, the addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s well-known and widely-registered trademark ELECTROLUX, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely-known and widely-registered trademark ELECTROLUX. Indeed, in the view of the Panel, the adoption by the Respondent of a domain name identical to the Complainant’s trademark ELECTROLUX inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below), and the consequential tarnishing of the Complainant’s trademark ELECTROLUX and also the valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds little evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel notes that the recent use of the disputed domain name to most articles about (and sell) Electrolux products has been unauthorized and made without any disclaimer.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 [the Respondent’s] web site or location or of a product or service on its web site or location.
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its widely-known and widely-registered trademark ELECTROLUX.
Again, by registering and using the disputed domain name incorporating the Complainant’s widely-known and widely-registered trademark ELECTROLUX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the Complainant’s widely-known and widely-registered trademark ELECTROLUX, held and used in commerce by the Complainant in many countries of the world, including Spain, where the Respondent resides, for several years prior to the date the Respondent became the registrant of the disputed domain name, it is reasonable for the Panel to take the view that the Respondent must have known and been aware of the Complainant’s rights in this trademark at the time the Respondent registered the disputed domain name and, as such, this is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. In this Panel’s view, a domain name which contains a third-party’s registered trademark would typically be used in good faith only by the owner of the respective right, by licensees, or a similar class of rights-holder, which does not appear to be the situation in the present case.
Further, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “[…] consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, is a further indication that the disputed domain name was registered and is being used in bad faith.
Also, as the disputed domain name resolves to a website containing sponsored links which have nothing to do with the Complainant, the Panel agrees with the Complainant’s contention, for the reasons cited by the Complainant, that this constitutes further evidence of registration and use of the disputed domain name in bad faith on the part of the Respondent. See Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2001-0903. See also The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2009-0944.
Again, even though not conclusive, the failure of the Respondent to reply to the Complainant’s proposals and reminders to settle this dispute amicably, as referred to above, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.
Finally, the failure also of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <electroluxergorapido.com> be transferred to the Complainant.
Dated: January 24, 2011