WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Ong Nguyen Huu Vinh
Case No. D2011-0318
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ong Nguyen Huu Vinh of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <suamaygiatelectrolux.com> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2011. On February 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On February 17, 2011, eNom 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 February 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2011.
The Center appointed Daniel Kraus as the sole panelist in this matter on April 4, 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, 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. It is also one of the largest producers in the world of similar equipment for professional users and the market leader in many of the individual product categories in which it competes. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands such as ELECTROLUX, AEG, AEGELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE.
The trademark ELECTROLUX is a known trademark within the areas for appliances and equipment for kitchen, cleaning and outdoor products.
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 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>.
5. Parties’ Contentions
The Complainant contends that its trademark ELECTROLUX is a well-known trademark, that the Domain Name is confusingly similar to its ELECTROLUX trademark.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name and no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following in order to obtain the transfer of the Domain Name:
i. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name, and
iii. The Domain Name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy above.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) of the Policy above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
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 undisputed that the Complainant is the owner of the trademark ELECTROLUX.
The Domain Name consists of the Complainant’s trademark to which the suffix “.com” and the prefix “suamaygiat” are added. The suffix “.com” is a generic top level domain without any legal significance to render a domain name dissimilar or to prevent customer confusion.
By affixing the generic terms “sua may giat” to the Complainant’s trademark, which seems to mean “reparation of washing machines” in Vietnamese, and registering such combination of words (without the spaces), the Respondent has created a confusingly similarity between the Domain Name and the trademark of the Complainant. Although the combined word “suamaygiat” is quite long, the trademark ELECTROLUX still appears very clearly, even dominantly due to its notoriety. At least at first sight, a certain affiliation between the two Parties may be expected by an Internet user.
This view is consistent with the opinion expressed by other panels in a good number of cases (cf. Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312; Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Koninklijke Philips Electronics N.V. v. NicNax, WIPO Case No. D2001-1245; Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO Case No. D2000-1375).
Therefore, the Panel finds that the Domain Name <suamaygiatelectrolux.com> is confusingly similar with the Complainant’s trademark ELECTROLUX. The first criterion, as per paragraph 4(a) of the Policy, is hence established.
B. Rights or Legitimate Interests
The present case raises the question of what kind of use may be considered a bona fide offering of goods or services. Some uses may be legitimate, others not, depending on the extent to which they accurately reflect the user’s connection with the mark owner (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; LEGO Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913).
In the present case, it seems clear that the website under the Domain Name offers services relating to Electrolux washing machines, as an automatic translation of the content of the website made by the Panel seems to indicate. The only issue before the Panel, then, is whether the Respondent’s offerings may be characterized as bona fide.
To be bona fide, the offering must typically meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Those include, the following:
- A respondent must actually be offering the goods or services at issue;
- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
- A respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name.
The Oki Data case involved parties in an existing distributor relationship, unlike the present case, where the Complainant has not authorized the Respondent to act as its agent or otherwise. The absence of the record of explicit authorization is not dispositive per se because, in principle, it is not necessarily abusive under the Policy to resell or promote for resale genuine trademarked goods by reference to the mark (see Philip Morris Incorporated v. Alex Tsypkin, supra).
In the present case, the Respondent seems to be using the website under the Domain Name as a repair place for Electrolux washing machines only. However, it is difficult for this Panel to imagine that the Respondent only specializes in that brand, so that it can be argued that the trademark is being used in order to entice Internet users to its website and, then, to the physical site of the repair service provider. The fact that the Complainant’s trademark appears predominantly on the Respondent’s website also provides indications of its bad faith use vis-à-vis reinforcing possible confusion as to the source of the website.
Moreover, the Respondent does not disclose on the entry website by a disclaimer that it is neither affiliated to nor authorized by the Complainant itself. Internet users may hence be misled to assume that the Respondent’s website is run by the trademark owner itself, an affiliate or an official sales agent of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under the Policy.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples, which 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 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 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 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 Vietnam, where the Respondent resides, for several years prior to the date the Respondent became the registrant of the 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 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, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
Besides, as the Domain Name leads to a repair center website operated by the Respondent, which has nothing to do with and has not been authorized by the Complainant in any way, in the particular circumstances the Panel finds that this constitutes further evidence of registration and use of the Domain Name in bad faith on the part of the Respondent. See Philip Morris Inc. v. Alex Tsypkin, supra. See also The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2009-0944.
Finally, the failure 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 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, <suamaygiatelectrolux.com> be transferred to the Complainant.
Dated: April 18, 2011