WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Bryan Smith
Case No. D2011-1149
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Bryan Smith of Gainesville, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electroluxvacuums.com> (the “Disputed Domain Name”) is registered with Name.com LLC.
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 Name.com LLC. a request for registrar verification in connection with the Disputed Domain Name. On July 9, 2011, Name.com LLC. 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 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2011. Thereafter, on August 12, 2011, the Center, due to a potential failure in the delivery of written notice to the Respondent, re-forwarded a copy of the written notice to the Respondent and extended the due date for Response to September 1, 2011. The Respondent did not submit any response during the extended period for response. The Center noted that it would proceed to appoint the Panel in this matter on September 5, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 12, 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.
The Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the courier’s delivery report to the Center of physical delivery of the Written Notice to the Respondent even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand actual proof of service.
4. Factual Background
The Complainant operates a business with over 50,000 employees and sells electrical appliances in more than 150 countries. The Complainant holds registrations for the ELECTROLUX trademark and variations of it in more than 150 countries including the United States of America, which it uses to designate a range of electrical appliances. The first United States registration which has been in effect since 1925 is used to designate electrically-powered vacuum cleaners. Approximate global revenue for sales of Electrolux brand product in 2009 was SEK105 billion.
The Complainant conducts business on the Internet using numerous domain names containing the word “electrolux” including <electrolux.com> with an electrical appliance business website resolving from this domain name. The Complainant also owns approximately 700 domain names comprising or containing the word “electrolux”.
The Disputed Domain Name <electroluxvacuums.com> was registered on June 30, 2010. The Respondent uses the Disputed Domain Name for a click-through or pay-per-click (“PPC”) landing page. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <electroluxvacuums.com> is typed in, it redirects traffic to a PPC landing page containing advertisements and links most of which are in connection with Electrolux brand vacuum cleaners.
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark ELECTROLUX in various countries as prima facie evidence of ownership.
The Complainant submits that the mark ELECTROLUX is well-known (citing AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777). The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <electroluxvacuums.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the ELECTROLUX trademark (citing Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488) and that the similarity is not removed by the addition of the descriptive word “vacuums”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks (citing Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; 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). The Complainant contends that because Electrolux is not the name of the Respondent, the Respondent may not claim any rights established by common usage either (citing Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated, WIPO Case No. D2001-0826). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (citing Drexel University v. David Brouda, WIPO Case No. D2001-0067 - “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 [c]omplainant”).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3), as by using the Complainant’s ELECTROLUX mark in the Disputed Domain Name, “to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website” and goes on to submit that the creation of the PPC landing page by the concerned registrar rather than the Respondent is beside the point as it remains within the Respondent’s power to request the page be taken down (citing Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ELECTROLUX the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark ELECTROLUX in the Respondent’s relevant jurisdiction the United States pursuant to United States Trademark Registration No. 71308416 registered from June 23, 1931 in international class 9 for “electrically-operated portable vacuum cleaners and attachments therefore for blowing, filtering, and cleaning and parts thereof.” In any event, the propriety of a domain name registration may be questioned under the Policy by comparing it to a trademark registered in any country: (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark ELECTROLUX.
It is well established by numerous previous panels that the mark ELECTROLUX is well-known (see Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184; Aktiebolaget Electrolux v. Electroluxx, DP Manager, Temporarily assigned to Eurobox Ltd., WIPO Case No. D2008-1622; Aktiebolaget Electrolux v. Serbay Narin, WIPO Case No. D2009-1444; Aktiebolaget Electrolux v. Ferhat TUNALI, FBS (DI_4010121)/SENOL KARAKAYA/PrivacyProtect.org, WIPO Case No. D2010-1791).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ELECTROLUX trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) conjoined with the descriptive word “vacuums” (c) followed by the top level domain suffix “.com”.
It is also well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “electroluxvacuums”.
In addition, it is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is generally considered confusingly similar to that mark despite the addition of a descriptive word or its plural form such as, in this case, the word “vacuums”: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033). The confusion is compounded because the term is descriptive of the goods or services marketed by the Complainant in relation to the trademark.
This Panel therefore finds that the additional element, specifically the descriptive word “vacuums”, after the Complainant’s registered trademark, does not serve to adequately distinguish so the Disputed Domain Name in this matter remains confusingly similar to the registered trademark: (see Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the ELECTROLUX trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that the website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see: National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a PPC landing webpage advertising or offering for sale products in connection and competition with the Complainant’s mark and thereby illegitimately “trying to sponge off the Complainant’s world famous trademark”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is not making a legitimate noncommercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [(relevantly)]:
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 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 your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found; (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (see: Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries when registering a domain name. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith in this case (see: Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark ELECTROLUX is so well known in the United States of America for electrical appliances, and in particular vacuum cleaners, that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark ELECTROLUX, United States Registration No. 71308416 from 1931 predating its rights from the Respondent’s registration by 79 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a webpage containing links and advertisements that directly compete with the offerings to be found on the website operated by the Complainant. In this Panel’s view, it is in breach of the Name.com LLC “Domain Name Registration Agreement” for breach of the acceptable use policy which requires that the Respondent will “affirm and guarantee that neither the content you place on our network, nor the domain names you register through our services shall contain or resolve to websites hosted elsewhere which contain illegal activities or prohibited content or links to similar” going on to define illegal activities or prohibited content as “content or actions that infringe the trademark, copyright, patent rights, trade secret or other intellectual property rights, or any other legal rights of Name.com or any third party.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Name is apparently for domain name monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s Electrolux products. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (see: Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Lilly ICOS LLC v The Counsel Group, LLC, WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623).
This Panel finds that the Respondent has taken the Complainant’s trademark ELECTROLUX and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a PPC parking webpage for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <electroluxvacuums.com> be transferred to the Complainant.
Dated: September 23, 2011