WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Jeff Bradshaw
Case No. D2011-1595
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Jeff Bradshaw of Middleton, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electroluxvacuumbags.com> (the “Domain Name”) is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On the same date, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Domain Name. On September 23, 2011, Melbourne IT Ltd. 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 September 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2011.
The Center appointed David Taylor as the sole panelist in this matter on November 21, 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto given that no Response was filed.
The Complainant is AB Electrolux, a Swedish company registered before the Swedish Companies Registration Office in 1919. The Complainant is one of the largest manufactures of appliances and equipment for kitchen and cleaning, both for consumers and for professional users. These appliances include vacuum cleaners, refrigerators, washing machines, etc.
The Complainant provided a list of its trade mark and domain name registrations and provided trade mark registration certificates for its Community trade mark (“CTM”) ELECTROLUX number 000077925, registered on September 16, 1998 and for its United States Patent and Trademark Office trade mark (“US trade mark”) number 0908002 registered on February 16, 1971.
The Domain Name was registered on March 31, 2008. The Domain Name resolves to a parking page featuring the Complainant's ELECTROLUX trade mark and containing a variety of links incorporating the Complainant's trade mark such as ELECTROLUX VACUUM HOSE PARTS or ELECTROLUX VACUUM CLEANER BELTS as well as information about the Complainant, its business and its history.
5. Parties’ Contentions
(i) The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's ELECTROLUX trade mark.
The Complainant identifies itself as a world leading producer of appliances and equipment for kitchen and cleaning and asserts that it was founded in 1901. The Complainant provided its trade mark and domain name portfolio as well as evidence that it is the registered owner of the ELECTROLUX CTM and US trade mark. According to the Complainant, Complainant's well-known ELECTROLUX trade marks are connected with good reputation and international recognition.
The Complainant contends that the Domain Name incorporates its registered ELECTROLUX trade mark and that the addition of the suffix "vacuumbags" and of the gTLD “.com” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name, “Electrolux”, "instantly recognizable as a world famous trademark".
Finally, the Complainant argues that "anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant".
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant asserts that the Respondent does not own any registered trade marks or trade names corresponding to the Domain Name and that the Domain Name was registered several decades after the Complainant registered its ELECTROLUX trade mark.
The Complainant further argues that the Respondent is not a licensee of the Complainant and has not been authorized by the Complainant to use its ELECTROLUX trade mark.
In addition, the Complainant asserts that the mere registration of a domain name does not give the owner a right or legitimate interest in respect of the domain name.
Furthermore, the Complainant contends that he has not found any element which would suggest that the Respondent has been using the term “electrolux” in any other way that would give him any legitimate rights in the “electrolux” term and that, consequently, the Respondent cannot claim any rights established by common usage.
The Complainant also asserts that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services since the Respondent has intentionally chosen a domain name based on a registered trade mark in order to generate traffic to a website where sponsored links are displayed. Indeed, according to the Complainant, when clicking on one of the links, one is redirected to the website “www.totalvac.com”. The website “www.totalvac.com” appears to offer products of the Complainant's competitors and includes information relating to the Complainant. The Complainant therefore argues that the Respondent also uses the Domain Name to mislead internet users to a commercial website and, by doing so, the Respondent is tarnishing the Complainant's trade mark ELECTROLUX.
(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant asserts that the Respondent registered the Domain Name in order to take advantage of the Complainant's rights in the ELECTROLUX trade mark.
The Complainant provides a copy of the cease and desist letter it sent to the Respondent on July 20, 2011, where it advised the Respondent that the Domain Name registration violated the Complainant's trade mark in the ELECTROLUX trade mark and requesting the transfer of the Domain Name in exchange of the reimbursement of the Respondent's expenses for registering and transferring the Domain Name. The Complainant also provides a copy of a reminder sent to the Respondent on August 17, 2011. The Complainant asserts that he received no response to his correspondence. Relying on previous cases, decided under UDRP Policy, the Complainant contends that the fact that the Respondent did not reply to the Complainant's letter or to its reminder is relevant to a finding of bad faith.
The Complainant further argues that bad faith is demonstrated by the content of the website at the Domain Name. According to the Complainant, directing internet users to a website including sponsored links, purportedly redirecting to a third party website including similar products to those offered by the Complainant is likely to give rise to confusion as to an association, affiliation or sponsorship of the websites. The Complainant concludes that the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.
For all the foregoing reasons, the Complainant seeks the transfer of the Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows:
A. Identical or Confusingly Similar
The first element that needs to be established is whether the Complainant has rights in a term to which the Domain Name is identical or confusingly similar.
Based on the evidence provided by the Complainant to substantiate its trade mark rights, the Panel is satisfied that the Complainant has prior rights in the trade mark ELECTROLUX which is incorporated in its entirety in the Domain Name.
The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the trade mark ELECTROLUX in which the Complainant has rights.
The Domain Name reproduces the Complainant's exact trade mark in the term ELECTROLUX with the addition of the suffix ''vacuumbags'' as well as the gTLD ''.com''.
The Panel finds that the dominant and distinctive element of the Domain Name is "electrolux" which is identical to the Complainant’s trade mark. The Panel is of the view that generally confusing similarity may not be avoided where a domain name reproduces the entire trade mark of a third party with the mere addition of descriptive or non-distinctive terms. In this case, the addition of the suffix ''vacuumbags'', comprising generic terms, does not sufficiently differentiate the Domain Name from the Complainant's ELECTROLUX trade mark so as to avoid confusing similarity. The Panel finds that this addition may be considered as a description of one of the products with which the Complainant is associated and thus reinforces the connection to the Complainant's trade mark. (See The Condé Nast Bridal Group, Inc. v Trademark, WIPO Case No. D2006-0452).
With regard to the addition of the gTLD “.com”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service trade mark rights; or
(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service trade mark at issue."
Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the panel should find for the complainant unless the respondent demonstrates a plausible case of rights or legitimate interests.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that showing.
For instance, there is no evidence suggesting that the Respondent is affiliated with the Complainant, is commonly known by the Domain Name, or has obtained any licence or authorization to use the Complainant's ELECTROLUX trade mark.
The Domain Name points to a parking page inducing internet users to visit a competing website providing services similar to those covered by the Complainant's trade mark registrations through the wording "TotalVac.com has vacuum bags for you". Such use of the Domain Name cannot constitute a bona fide offering of goods or services, or a legitimate non-commercial of fair use of the Domain Name since it essentially relies on user confusion, most probably to generate financial gain.
Finally, the Panel considers the Respondent's failure to respond to the cease and desist letter, the reminder sent the following month or to the Complaint itself as additional suggestions of the lack of rights and legitimate interests of the Respondent in the Domain Name.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
"(i) circumstances indicating that [the respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant 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) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 Complainant has provided substantial and convincing evidence to establish that it has rights in the ELECTROLUX trade mark, which has achieved significant reputation and fame worldwide. Given the Complainant's unquestionable worldwide reputation, as also evidenced by numerous previous UDRP panel decisions (see, e.g., AB Electrolux v. Bryan Smith WIPO Case No. D2011-1149 or AB Electrolux v. Ong Nguyen Huu Vinh, WIPO Case No. D2011-0318), it is difficult to conceive, in the present case, of a plausible circumstance in which the Respondent could legitimately use the Domain Name.
In addition, the content of the website at the Domain Name provides links including ELECTROLUX and induces Internet users to visit a competing website providing products similar to those covered by the Complainant's trade mark registrations through the wording "TotalVac.com has vacuum bags for you". The Panel is therefore of the opinion that the Respondent was in all likeliness fully aware that the registration and use of the Domain Name would infringe the Complainant’s rights in the ELECTROLUX trade marks.
Furthermore, based on the evidence produced by the Complainant regarding the website to which the Domain Name resolves, the Panel considers that the commercial links contained on the website to which the Domain Name points suggest that the Respondent is engaged in a revenue-generating scheme based on user confusion.
The Panel is therefore convinced that the Respondent has registered and is using the Domain Name in order to mislead customers to believe that the Complainant is in some way associated with the Respondent's website. Such registration and use has been considered as constituting bad faith use under paragraph 4(b)(iv) of the Policy. (See, e.g., Ares Trading S.A. v. Lava Marketing Services, WIPO Case No. D2006-0890 and Philip Morris USA Inc. v. Malton International Ltd., WIPO Case No. D2009-1263). The Complainant has not evidenced any connection between the Respondent and “www.totalvac.com”. However, it is not necessary for the registrant itself to have profited directly under an arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.8, "it would normally be sufficient to show that profit or "commercial gain" was made by a third party".
Finally, the Respondents' failure to rebut any of the Complainant's arguments is a supplementary element from which the Panel infers bad faith on the Respondents' part.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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, <electroluxvacuumbags.com>, be transferred to the Complainant.
Dated: December 5, 2011