WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Torres, Todd
Case No. D2011-1147
1. The Parties
The Complainant is AB Electrolux, of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Torres, Todd, of Manchester, United States of America (USA).
2. The Domain Name and Registrar
The disputed domain name <electrolux-vacuumbags.com> is registered with Network Solutions, LLC (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 July 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 23, 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
AB Electrolux (hereafter « the Complainant ») is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. AB Electrolux is a producer of appliances and equipment for kitchen and cleaning.
The Complainant is a global manufacturer of home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year including in the USA.
Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under various brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSI, EUREKA and FRIGIDAIRE.
In 2009, Electrolux had sales of SEK 109 billion (USD16,8 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 including in the United States.
For instance: USA word mark ELECTROLUX filed on November 10, 1969 under n°0908002 for products in class21.
The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among which:
- <electrolux.info>, and
The Respondent registered the disputed domain name on December 25, 2010. It is operating a website as a one stop store to find offers for vacuum bags designed by the Complainant and competitors.
The Complainant first tried to contact the Respondent on March 11, 2011 through a cease and desist letter which remained unanswered. So, the Complainant sent a reminder on May 3, 2011, however without any reply.
5. Parties’ Contentions
According to the Complainant, the domain name <electrolux-vacuumbags.com> comprises the word “Electrolux”, which is identical to the registered trademark ELECTROLUX.
The Complainant also contends that the addition of the hyphen and the suffix “vacuumbags” 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 “vacuumbags”, which describes one of the Complainant’s product lines, is rather fitted to strengthen the impression that the disputed domain name is in some way connected to the Complainant.
The Complainant further asserts that the Respondent does not hold any registered trademark or trade name corresponding to the disputed domain name. Nor has he been commonly known by the disputed domain name. The Respondent should be considered as having no right or legitimate interests in respect of the disputed domain name. It is not making a legitimate noncommercial use or fair use of the disputed domain name.
The Respondent is using the website as an online webstore to find the best offers for vacuum bags notably designed by the Complainant. Nowhere on the website is there a disclaimer to explain the non-relationship with the Complainant. A disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support legitimate interest.
Last, the Respondent knew of Complainant’s prior rights when he applied for the disputed domain name. There is no conceivable interpretation of Respondent’s registration other than bad faith. He has used the disputed domain name for commercial gain to attract consumers by creating a likelihood of confusion with Complainant’s marks as to the source, affiliation or endorsement of his website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant holds rights on the trademark ELECTROLUX.
The disputed domain name wholly incorporates that trademark, adding descriptive words of products or accessories to the Complainant cleaning equipment.
As stated in previous decisions, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610 , Prada S.A. v. Liu Wan Qiu/Amandine Clavier, WIPO Case No. D2011-0091.
Thus, the Panel finds that the combination of the words "vacuum" and "bags" to the trademark ELECTROLUX is not sufficient to avoid the confusing similarity between the disputed domain name and the Trademark.
The Panel therefore finds that the Complainant fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has not authorized the Respondent to use its distinctive trademark ELECTROLUX. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
However the lack of rights or legitimate interests is reinforced by the fact that the Respondent did not reply to the dease and desist letters sent by the Complainant prior to the present Proceedings. He is now in default and has not challenged Complainant’s contentions.
Nonetheless it appears that the disputed domain name in issue is used to offer for sale products of the Complainant, especially accessories fitting some products, i.e. vacuum bags. The question is therefore whether the Respondent could have a legitimate interest in using the domain name to offer some trademarked products even if he is not an authorized reseller or dealer of the trademark owner.
The consensus view on whether a reseller distributing trademarked goods or services can have rights or legitimate interests in a domain name which contains the trademark is summarised in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.5 as follows:
“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the website to sell only the trademarked goods, and the website’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]
Furthermore: A small number of UDRP panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”
The Oki Data case (Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903), supra, which has been followed by many UDRP panels, held that the use of a manufacturer’s trademark by a dealer or reseller should be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy if the following conditions are satisfied:
(a) The respondent must be actually offering the goods or services at issue.
(b) The respondent must be selling only the trademarked goods.
(c) The site itself must disclose accurately the respondent’s relationship with the trademark owner.
(d) The registrant must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the chance to reflect its own mark in a domain name.
Applying these principles, the Respondent would fail on (b) and (c). There is no statement about the Respondent’s relationship with the Complainant.
Furthermore, the website does not offer exclusively the Complainant’s products. A mere search on the search engine available on the website shows that products of Complainant competitors are also compared and/or offered for sale.
See in similar circumstances: Burberry Limited v. Carlos Lim WIPO Case No. D2011-0344 “Here, Respondent has included no disclaimer and, though not offering goods for sale, at one point had advertisements for the luxury goods of Complainant’s competitors.”
Accordingly, the Panel finds paragraph 4(a)(ii) of the Policy established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Circumstances showing that the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) The Respondent has, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, 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 location or of a product or service on the Respondent’s website or location.
The Respondent has failed to invoke any circumstance that could demonstrate that it did not register and use the disputed domain name in bad faith.
The Complainant has shown evidence that the ELECTROLUX mark has been registered years before the disputed domain name was registered in December 2010, and that the trademark has acquired worldwide reputation in relation with the products available on the website operated by the Respondent.
It results from the above detailed circumstances that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website.
Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).
For 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-vacuumbags.com> be transferred to the Complainant.
Dated: September 6, 2011