WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Moniker Privacy Services / Registrant  Charlie Kalopungi
Case No. D2011-0410
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Moniker Privacy Services / Registrant  Charlie Kalopungi of Pompano Beach, Florida, United States of America, and of Seychelles, respectively.
2. The Domain Name and Registrar
The disputed domain name <homecarepartselectroluxusa.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2011. On March 3, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 8, 2011, Moniker Online Services, LLC 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 Center sent an email communication to the Complainant on March 9, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 9, 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 March 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.
The Center appointed J. Nelson Landry 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 was founded in Sweden in 1901 and registered there as a company in 1919. It is now a leading producer of appliances and equipment for kitchen and cleaning such as refrigerators, dishwashers, washing machines, vacuum cleaners and cookers marketed and sold under the brands Electrolux, AEG, AEG-Electrolux, Eureka and Frigidaire. It is also an important producer in the world of similar equipment for professional users.
The Complainant sells its home and professional use products to more than 40 million customers in 150 countries every year. In 2009, the Complainant had sales of SEK 109 billion and employed 51,000 persons.
The Complainant has registered the trademark ELECTROLUX as a word and figure trademark in association with products in several classes in more than 150 countries throughout the world (herein the “Trademark” or the “trademark ELECTROLUX”). Furthermore the Complainant has registered more than 700 domain names in the international and national categories, each one incorporating the trademark ELECTROLUX along with a variety of generic or descriptive words.
The disputed domain name was registered on September 3, 2010, several decades after the use and registrations of the trademark ELECTROLUX in over 150 countries.
On November 15, 2010, the Complainant sent a cease and desist letter as well as an email to the Respondent advising the latter of the unauthorized use of its trademark ELECTROLUX as part of the disputed domain name and requested a voluntary transfer of said domain name and offered the payment of the expenses for registration and transfer of the said domain name. A reminder was sent on November 23, 2010, and a final reminder was again sent on November 30, 2010.
5. Parties’ Contentions
The Complainant submits that by reason of its extensive use of the trademark ELECTROLUX in association with the home appliances and equipment for kitchen and cleaning, it has become one of the largest producers in the world of this type of equipment and that it’s Trademark became very well-known, with a good reputation and international recognition associated therewith.
Furthermore, by reason of its registration in more than 150 countries all over the world and the registration of about 700 domain names each incorporating the Trademark ELECTROLUX, the awareness of its Trademark is now considered in the whole Community and in the United States of America as significant and thus benefits of substantial acquired distinctiveness.
The Complainant further submits that the dominant part of the disputed domain name is the word “electrolux”, identical to its Trademark and that the disputed domain name is confusingly similar to its Trademark. It further submits that the words or term “homecareparts” is well connected to it and its home appliances repair services which would create and strengthen the impression that the disputed domain name is affiliated with the Complainant.
As to the suffix “usa” which refers to the United States, the Complainant relies in the earlier decision PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865, wherein the panel considered the insertion of the country name “Afghanistan” to PepsiCo and stated “in the Panel’s view, forming a domain name, such as the disputed domain name here, by appending a country name (here Afghanistan) to a complainant’s mark (here being “PEPSICO”) is completely insufficient to dispel user confusion from inevitably occurring”.
Similarly, the Complainant relies on the earlier decision Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, where the panel acknowledged the long established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kind of generic prefixes and suffixes and therefore represents that the prefix “homecareparts”, a generic term, does not distinguish a company and furthermore, relies on PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189, in which decision the panel stated that “the mere addition of a generic or descriptive term does not exclude the likelihood of confusion”. The Complainant added that similarly adding the top level domain “.com” is irrelevant to determine the confusing similarity of trademarks and concludes that having regard to the reputation of its trademark ELECTROLUX, there is a considerable risk that the public will perceive the disputed domain name either as one of those it owns or that there is some kind of commercial relation between the Complainant and the Respondent. Thus, the disputed domain name is confusingly similar with the well-known trademark ELECTROLUX.
According to the Complainant, the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name and there is no license or authorization of any kind that the Complainant had given to the Respondent to use the trademark ELECTROLUX.
The Complainant relies on two decisions: Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 and Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, supra, to represent that in the absence of any license or permission from it and since the Respondent is not an authorized dealer of its products nor ever had any business relationship with the Complainant, the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the disputed domain name. Such are factors in finding the absence of a legitimate interest with the Respondent. Furthermore, according to the Complainant, it has not found that the Respondent had any registered trademarks or trade names corresponding to the disputed domain name or anything else that would suggest that the Respondent had been using “Electrolux” any other way that may give any legitimate rights in the name.
Finally, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services in that the disputed domain name is currently connected to a website displaying sponsored links thereby misleading Internet users to a commercial website and the Respondent is trying to benefit from the Complainant’s world famous Trademark. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.
The Complainant concludes its representations about the absence of any actual or contemplated bona fide or legitimate use of the disputed domain name in relying in cases where the panel noted and relied on “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” to conclude to said absence of bona fide use. See Guerlain S.A. v. Peikang, supra; Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488 and Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh, WIPO Case No. D2003-0494.
Relying on the well-known status and widespread reputation of its trademark ELECTROLUX throughout the world the Complainant further contends that its trademark ELECTROLUX, as well as the increasing number of domain names comprising its Trademark in combination with other words which relate to kitchen and cleaning appliances, explains the motivation that the Respondent had to register the disputed domain name. The Complainant did not get any response to its cease and desist letter of November 15, 2010, nor of its two reminders notwithstanding the offer to reimburse the pocket expenses for registration and the transfer fees support and inference of bad faith. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The Complainant represents that the current connection of the disputed domain name to a website containing sponsored links offering appliances demonstrates the use of the disputed 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 Trademark as to the source, sponsorship, affiliation or endorsement of the websites. The Complainant relies on an earlier case where it was involved and where the panel stated that “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”; see Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
On the basis on these representations, the Complainant contends that the disputed domain name is confusingly similar to its Trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that it was registered in bad faith and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has adduced substantial evidence in terms of very long and extensive use of its trademark ELECTROLUX in association with home cleaning apparatus and products, as well as similar equipment for professional users and that, as a consequence of its promotion and advertisement of the Trademark, the company had become one of the largest producers of appliances and equipment for kitchen and cleaning and that a substantial amount of goodwill and fame is now associated with the trademark ELECTROLUX. The Panel finds that the Complainant has rights in the trademark ELECTROLUX.
The addition of a term “homecareparts” constituted of descriptive terms somewhat associated with the category of products the Complainant produces, cannot be ignored in the present context in particular, when one, as the Panel did, considers the variety of combinations of descriptive terms associated with the well-known trademark ELECTROLUX in many amongst the about 700 domain names registered and owned by the Complainant such as <electrolux-appliances.com>, <electrolux-filters.com>, <electrolux-floorcare.com>, <electrolux-home-comfort.com.ua>, <electrolux-kitchen.com>, <electrolux-majorappliances.com>, <electrolux-spareparts.co.uk> and <electrolux-spares.com> to name a few. This Panel considers that it would be only normal for an Internet user to consider the disputed domain name as another one of those of the Complainant.
As the Complainant represented with the support of earlier UDRP decisions, the addition of generic or descriptive words or term “homecareparts” to a well-known trademark or the addition of a suffix such as “.com” and “usa” does not in any way diminish the confusing similarity of the disputed domain name with the Complainant’s highly distinctive Trademark.
The Panel finds that the disputed is confusingly similar with the ELECTROLUX Trademark.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark.
Considering the fact that the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant, on the one hand, and the incorporation of the well-known and distinctive trademark ELECTROLUX in the disputed domain name with the addition of descriptive generic terms related to the general field of activities and products of the Complainant, the Panel does not see, in the current evidence, any indicia that the Respondent is making a bona fide, noncommercial or legitimate use of the disputed domain name. To the contrary, the Respondent, as represented by the Complainant, is misleading Internet users to a commercial website with links to searches related to products of the Complainant such as appliances, kitchen appliances and washing machines.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of [the] Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 should be noted that the circumstances of bad faith are not limited to the above.
Considering the goodwill, the distinctive character and fame associated with the trademark ELECTROLUX, the high volume of sales and number of countries where ELECTROLUX products are marketed and sold, this Panel is of the view that there is no plausible argument or excuse to consider that the Respondent was not aware of the trademark ELECTROLUX when it chose to register the disputed domain name. In this Panel’s view, the selection of the said domain name is clearly an attempt to capitalize on the reputation of the Trademark of the Complainant and for these reasons, the Panel finds that the disputed domain name was registered in bad faith. This bad faith is further confirmed by the failure of the Respondent to respond to the letter of demand and the two reminders sent by the Complainant as held in the Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., supra.
In respect of use of the disputed domain name in bad faith, the Panel acknowledges and adopts the statement of the panel in the earlier decision of Aktiebolaget Electrolux v. Jose Manuel, supra, which clearly applies in the present case. The Panel finds herein that the use of the disputed domain name which incorporates the trademark ELECTROLUX and generic words describing products marketed by the Complainant, is certainly having “the effect [of misleading] 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”. This confusion is, in the Panel’s view, confirmed by the nature of the headings of the related searches listed on the website of the Respondent. The Panel finds that the disputed domain name is used in bad faith by the Respondent.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <homecarepartselectroluxusa.com> is confusingly similar to the Complainant’s trademark ELECTROLUX;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <homecarepartselectroluxusa.com> be transferred to the Complainant.
J. Nelson Landry
Dated: April 13, 2011