WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. PrivacyProtect.org / Foxvalley Appliance Service
Case No. D2011-0233
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is PrivacyProtect.org of Munsbach, Luxembourg / Foxvalley Appliance Service of Aurora, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electroluxrepairs.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amendment to the Complaint on February 7, 2011.
The Center verified that the Complaint together with the amendment to 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 February 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on March 14, 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, AB Electrolux (“Electrolux”), is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. AB Electrolux is a world leading producer of appliances and equipment for kitchen and cleaning. Electrolux is also one of the largest producers in the world of similar equipment for professional users.
Electrolux is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as Eletrolux, AEG, AEGElectrolux, Zanussi, Eureka and Frigidaire. In 2009, Electrolux had sales of SEK 109 billion and 51,000 employees.
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. Annex 6 of the Complaint.
The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide. Annex 7 of the Complaint.
The disputed domain name <electroluxrepairs.com> was registered on October 17, 2010.
There is no information available about the Respondent except for that contained in the Complaint and in the Registrar’s records which essentially provides only the name and contact details of the Respondent.
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules.
5. Parties’ Contentions
The Complainant states that the dominant part of the disputed domain name <electroluxrepairs.com> comprises the word “Electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world.
The Complainant states that the disputed domain name is confusingly similar to the trademark ELECTROLUX, the addition of the suffix “repairs” is not relevant and will not have any impact on the overall impression of the dominant part of the domain name. The term “repairs”, is well connected to the Complainant since its trademark is widely known for conducting business with home appliances and service and repair of the same, said suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant consequently the addition of the suffix “repair” does not prevent a finding of confusing similarity.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark.
The Complainant states that it has not found anything that would suggest that the Respondent has been using “Electrolux” in any other way that would give him any rights or legitimate interests in the name. Consequently the Respondent may not claim any rights established by common usage. The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is currently connected to a web site displaying sponsored links. Consequently, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant finally states that there is no doubt that the Respondent was aware of the rights the Complainant has in the trademark ELECTROLUX and the value of said trademark, at the point 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 noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain. Consequently by referring to the above-mentioned the Respondent must be considered to have registered and be using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the disputed domain name registered by the Respondent 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.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrates that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark ELECTROLUX based on the evidence provided in the Complaint. Annex 6 of the Complaint.
The disputed domain name consists of two different words, one consisting of the Complainant’s registered trademark and other of a generic term “repairs”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion. Especially when the generic word added to the trademark consist of a service that is undoubtedly also provided by the Complainant. The Panel concurs with the Complainant when it states that “said suffix is rather fitted to strengthen the impression that the domain name belongs to, or is affiliated with Complainant.”
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent with means to demonstrate its rights to and legitimate interests in the disputed domain name in responding to the Complaint. If the Complainant has established a prima facie case under paragraph 4(a)(ii) of the Policy, the burden is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name and has not registered it as a trademark, service mark or company name anywhere in the world. The Respondent, according to the Complainant, has not used the disputed domain name for a bona fide offering of goods or services and the Respondent is not commonly known by the name Electrolux. The Complainant indicates that it has not licensed or otherwise permitted the Respondent to use the trademark ELECTROLUX, and that there is no relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of a Response the Panel is satisfied that the Complainant has satisfied the second element of paragraph 4(a) of the Policy and has established that the Respondent has no rights or legitimate interests in said domain name.
C. Registered and Used in Bad Faith
This third element of paragraph 4(a) of the Policy requires that the Complainant demonstrates that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of two words, “Electrolux” and “repairs”. The first is a coined trademark owned by the Complainant and registered in more than 100 countries; the second is a generic term.
It is well known that the Complainant is a company that not only sells products such as refrigerators, dishwashers, washing machines, vacuum cleaners and cookers but also provides a series of services which include maintenance and repair of such appliances. It is difficult to believe that the election of the term “repairs” by the Respondent was merely random, since it is a service provided by the Complainant worldwide. Therefore one can reasonably conclude that the Respondent must have knowledge of the existence of the services provided by the Complainant at the time it registered the disputed domain name, demonstrating bad faith registration.
Moreover, the Respondent received a cease and desist letter sent by the Complainant informing of its prior rights. Therefore all use after such notification suggests use of the disputed domain name in bad faith. The Complainant sent a letter to the Respondent informing it of the Complainant’s rights and requesting a voluntary transfer of the disputed domain name with compensation for the expenses of registration and transfer fees. No response was received so a reminder was sent on November 23, 2010 and a final reminder November 30, 2010. This is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s marks and wanted to refer to the Complainant by continuing to use the disputed domain name as a pay-per-click web site.
In this particular case there were three intents from the Complainant to communicate with the Respondent and solve this matter amicably or at least grant the chance to provide some type of response, either by explaining the use of the disputed domain name or proceeding with the transfer of the same. As mentioned above no response was given. Consequently the Panel considers that the failure of the Respondent to respond to the letter of demand from the Complainant 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).
Furthermore, the Panel considers that by registering a domain name corresponding to a well-known trademark, the Respondent has intentionally tried to divert Internet users to its webpage, for commercial gain. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The disputed domain name is currently connected to a web site containing sponsored links. Whether or not the Respondent has influenced what links should be included on the web site 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 links contained on the web site associated with the disputed domain name. As stated by panel in Villeroy & Boch AG v.Mario Pingerna, WIPO Case No. D2007-1912, the Respondent has at all times been in contractual control of the content of the web site at the disputed domain name, and had the power to remove the parking page or links.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Therefore, in accordance with paragraphs 4(b)(i) and (iii) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and used 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 <electroluxrepairs.com>, be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: March 17, 2011