World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Oneandone / Brandon Rowe

Case No. D2011-1152

1. The Parties

The Complainant is AB Electrolux, Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Oneandone Private Registration / Brandon Rowe, Chesterbrook, Pennsylvania, United States of America and Philadelphia, Pennsylvania, United States of America, respectively.

2. The Domain Name and Registrar

The disputed domain name <electroluxrefrigeratorreviews.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 8, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On July 12, 2011, 1&1 Internet AG 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 September 12, 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 the same day.

On July 11, 2011, the Complainant requested a suspension of the proceeding which was granted and notified to the parties on July 14, 2011.

On August 12, 2011, the Complainant requested an additional suspension of the proceeding which was granted and notified to the parties on the same day.

On September 7, 2011, the Complainant requested the reinstitution of the proceedings since no agreement between the parties had been reached. On September 9, 2011, the Center Notified the Reinstitution of the Administrative proceeding.

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 September 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2011.

The Respondent sent a concise email on September 15, 2011 to the Center indicating that he believed that the dispute had already been resolved. The Center acknowledged receipt, informing him the due date for the Response and requesting confirmation, but no reply was received by the Center. On October 3, 2011, the Center informed the parties of the expiration of the Response due date and the subsequent Panel Appointment.

The Center appointed Andrew Brown QC as the sole panelist in this matter on October 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 Respondent registered the disputed domain name on January 25, 2011.

The Complainant’s company was founded in 1901 and registered in Sweden in 1919. It is a major global producer of appliances and equipment for kitchens and cleaning.

Evidence shows that the Complainant is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries each year. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands including ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE. In 2009, Electrolux made sales of SEK 109 billion and had 51,000 employees.

The Complainant is the registered proprietor of a large number of registrations for the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries. These registrations include a Community Trademark Registration (“CTM”) for the word ELECTROLUX in classes 3, 7, 8, 9, 11, 16, 20, 21, 35, and 37 with a priority date of April 1, 1996 and a United States Registered Trademark for the word mark ELECTROLUX in class 21 with a priority date of November 10, 1969.

The Complainant asserts that it has acquired an international reputation and goodwill in the trademark ELECTROLUX in relation to appliances and equipment for kitchens, cleaning and outdoor products as a result of its extensive and long-term use of the mark on its products and services, as well as advertising.

Further, the Complainant is the registrant of a large portfolio of domain names incorporating the mark ELECTROLUX including <electrolux.com>, <electrolux.net>, <electrolux.info>, and <electrolux.org>.

The Complainant states that as at the date of the Complaint, the disputed domain name displayed information about the Complainant and its history and business. The website also contained sponsored links including to a refrigerator supply company which is not connected to the Complainant or the Complainant’s products.

On July 11, 2011 in response to an email from the Complainant providing a copy of the Complaint the Respondent replied by email: “If you really want this fairly worthless domain, then by all means.”

In an email dated September 15, 2011 to the Center and the Complainant, the Respondent wrote: “Wasn’t this already resolved? I already consented to release it?” It appears, however, that the Respondent did not take the necessary steps to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain name be transferred to it.

B. Respondent

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 elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) that the disputed 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 disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is clear that the Complainant has extensive registered and unregistered rights in the trademark ELECTROLUX. The Complainant is the registered proprietor in numerous countries of numerous registered trademarks incorporating ELECTROLUX (including registrations for the word mark ELECTROLUX which pre-date registration of the disputed domain name). Further, the Complainant has established unregistered and/or common law rights in the name ELECTROLUX including by way of its use of the trademark on its product and services, by advertising and marketing, and by way of its portfolio of domain names incorporating the mark ELECTROLUX. The Panel is satisfied that ELECTROLUX is a well-known trademark and indeed this has been recognized previously in AB Electrolux v Ilgaz Fatih Micik , WIPO Case No. D2009-0777.

The ELECTROLUX trademark is clearly recognizable within the disputed domain name <electroluxrefrigeratorreviews.com>. The additional wording “refrigeratorreviews” is insufficient to prevent threshold Internet user confusion, particularly given that the trademark ELECTROLUX constitutes the dominant element of the disputed domain name.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in the Complainant’s favor.

B. Rights or Legitimate Interests

Pursuant to paragraph 4© of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made 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) that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) that 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 overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.

The Complainant states and the Panel accepts that it has never given the Respondent any license or authority to use the trademark ELECTROLUX. The disputed domain name was at the time of the Complaint being used to host sponsored links which relate to competitors of the Complainant including to a refrigeration supply company not related to the Complainant.

The additional text in the disputed domain name, “refrigeratorreviews”, suggests that content hosted at the website is in the nature of critical reviews of Electrolux refrigerators. However, the Panel does not consider that the Respondent has any rights and legitimate interests in the disputed domain name by way of any non-commercial or fair use. This is because the disputed domain name was at the time of the Complaint being used to host sponsored links, and is therefore being used for commercial advantage.

In the present circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name. Further, the Respondent’s email response to the Complainant (“If you really want this fairly worthless domain, then by all means.”) does not contain any assertion of right or legitimate interest. This could have been expected if there was any.

Accordingly, and in the absence of any formal Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(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 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 its documented out-of-pocket costs directly related to the domain name; or

(ii) 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) that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel is satisfied that the disputed domain name was registered and is being used in bad faith, in particular for attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark ELECTROLUX. Internet users searching for the Complainant’s websites are likely to come across the Respondent’s website and could then be diverted by the link to a refrigerator supply company and products not connected to the Complainant. Other links on the Respondent’s website operate as sponsored links so there is an intent to attract Internet users to the disputed domain name for commercial gain.

Although the text of the disputed domain name suggests that the content of the website is in the nature of critical reviews, the inclusion of sponsored links makes it clear that the website is used for commercial gain and not any legitimate or fair non-commercial use.

The Panel is accordingly satisfied that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b) of the Policy.

7. Decision

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, <electroluxrefrigeratorreviews.com>, be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Dated: October 21, 2011

 

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