WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Dennis Nowlan
Case No. D2011-1607
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Dennis Nowlan of Oak Forest, Illinois, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <electroluxrefrigeratorreviews.info> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011 against the privacy service, “Registration Private.” On September 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 22, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 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 September 26, 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 September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 31, 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 AB Electrolux is a Swedish joint stock company founded in 1901 and registered as a company in 1919. It is a leading global producer of appliances and equipment for kitchen and cleaning and similar equipment for professional users, including refrigerators, dishwashers, washing machines, vacuum cleaners and cookers. Each year, the company sells more than 40 million products to customers in 150 countries. In 2009, Electrolux had sales of SEK 109 billion and 51,000 employees.
The Complainant is the owner of, inter alia, the following trademark registrations (the “ELECTROLUX trademarks”):
The word trademark ELECTROLUX with reg. No. 0195691, registered for the territory of the United States on March 3, 1925 for goods and services in International class 9;
The word trademark ELECTROLUX with reg. No. 0248774, registered for the territory of the United States on October 30, 1928 for goods and services in International class 11;
The word trademark ELECTROLUX with reg. No. 0908002, registered for the territory of the United States on February 16, 1971 for goods and services in International class 21;
The word trademark ELECTROLUX with reg. No. 000077925, registered as a Community trademark on September 16, 1998 for goods and services in International classes 3, 7, 8, 9, 11, 16, 20, 21, 35 and 37.
The Complainant is the registrant of the domain names <electrolux.com>, <electrolux.net>, <electrolux.info> and <electrolux.org>.
The Domain Name was registered on May 21, 2011 according to the publicly available WhoIs database.
5. Parties’ Contentions
The Complainant contends that due to extensive and long-term use on products and services and extensive advertising costs, the trademark ELECTROLUX has acquired the status of well-known trademark for appliances and equipment for kitchen, cleaning and outdoor products, and has a substantial inherent and acquired distinctiveness. According to the provisions of Article 6bis of the Paris Convention for Protection of Industrial Property and Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services. Thus, the protection of the ELECTROLUX trademark goes beyond appliances and equipment for kitchen, cleaning and outdoor use and goods similar to equipment for kitchen, cleaning and outdoor use.
According to the Complainant, the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It comprises the word “electrolux”, which is identical to the ELECTROLUX trademark. The addition of the suffix “refrigeratorreviews” 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. Instead, the suffix “refrigeratorreviews”, which partly describes one of the Complainant’s product lines, “refrigerator,” together with the word “review”, is rather fitted to strengthen the impression that the Domain Name is in some way connected to the Complainant. The addition of the “info” top level domain does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to the determination of the confusing similarity between the Domain Name and the trademark of the Complainant.
The Complainant also alleges that anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark ELECTROLUX there is a considerable risk that the trade public will perceive the Domain Name either as owned by the Complainant or as somehow commercially related the Complainant. By using the trademark ELECTROLUX as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not found any registered trademarks or trade names owned by the Respondent that correspond to the Domain Name. The Complainant has not given to the Respondent any license or authorization to use the ELECTROLUX trademark. According to the Complainant, the registration of the Domain Name by the Respondent does not per se give him a right or a legitimate interest in respect of the Domain Name. The registration was made decades after the worldwide registration of the ELECTROLUX trademark. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website where sponsored links and links to competitors’ products are displayed. At the bottom the text “Copyright © 2011 Electrolux Refrigerator Reviews” is inserted. This text could be seen as the Respondent claims to have rights in the trademark ELECTROLUX. By doing this, the Respondent is misleading Internet users to a commercial website and consequently, the Respondent is tarnishing the trademark ELECTROLUX and is trying to extract profit from it.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The ELECTROLUX trademark is a well-known trademark with a substantial and widespread reputation throughout the world. The awareness of the trademark is significant and substantial in the whole community in general. The considerable value and goodwill of the mark ELECTROLUX is most likely what made the Respondent registered the Domain Name. The Domain Name is currently connected to a website containing sponsored links and links to products of the competitors of the Complainant. Consequently, the Respondent is using the 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 mark as to the source, sponsorship, affiliation or endorsement of the websites. Whether or not the Respondent has influenced what links should be included on the sites is irrelevant for the finding of bad faith in this case. It is also without relevance whether or not the Respondent is actually getting revenue from the pages himself.
The Complainant first tried to contact the Respondent on July 21, 2011 through a cease and desist letter, sent by email. The Complainant advised the Respondent that the unauthorized use of the ELECTROLUX trademark within the Domain Name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No reply was received so the Complainant sent a reminder on August 17, 2011, however without any reply.
The Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Names:
(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 Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
In the event of a default, under Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent has chosen not to submit a Response. His default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the ELECTROLUX trademark, registered for the territories of the United States and the European Union.
It is a common practice under the Policy to disregard the gTLDs such as the “.info” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “electroluxrefrigeratorreviews” section. The element “electrolux” is highly distinctive, and is identical to the Complainant’s well-known trademark ELECTROLUX. The “refrigerator” element is a generic word, referring to one of the main types of products of the Complainant. The “reviews” element is also a generic word with no distinctiveness. Therefore, the attention of an average Internet user would be mainly attracted by the dominating “electrolux” element of the Domain Name, and it is likely that he/she would regard the Domain Name as a word combination that refers to refrigerators made by the Complainant.
On these grounds, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, and provides certain arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in its defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the Domain Name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance is present in his favor.
The only information available about the Respondent is the publicly available WhoIs database and the information provided by the Registrar. The WhoIs database and the Registrar-provided information do not contain any evidence of rights or legitimate interests of the Respondent in respect of the Domain Name.
The Domain Name is confusingly similar to the well-known ELECTROLUX trademarks of the Complainant. The Respondent makes no claims for having rights or legitimate interests in respect of the Domain Name and provides no explanation whatsoever for its registration and use. It is especially notable that the Domain Name is currently linked to a website containing side by side links to products of the Complainant and of its competitors. It is possible that Internet users seeking information about the Complainant’s products may reach the Respondent’s website expecting that an affiliation of some sort exists between the Complainant and the Respondent, and then be exposed to the content of the website and possibly switch to any of the sponsored links or the links to competitors’ products.
The above satisfies the Panel that the Respondent is aware of the goodwill of the Complainant and of the ELECTROLUX trademark, and it may well be that this goodwill has motivated the Respondent to choose to register the Domain Name and to link it to the described website.
In the Panel’s view, such conduct could not be regarded as giving rise to rights and legitimate interests of the Respondent in the Domain Name. Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, 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:
(i) circumstances indicating that the holder has registered or has 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s ELECTROLUX trademarks, and was registered by the Respondent who at that time must have been clearly aware of the Complainant and of the goodwill of its trademarks. The Respondent has used the Domain Name to link it to a website containing side by side links to products of the Complainant and of its competitors and which displays information about the product, “Electrolux French Door Refrigerator EW23BC71IS.” As discussed in relation to the issue of rights and legitimate interests, this conduct makes it possible that Internet users searching for information about the Complainant’s products may reach the Respondent’s website expecting that an affiliation of some sort exists between the Complainant and the Respondent, and then be exposed to the content of the website. In such case, they may switch to products of the Complainant’s competitors through the links put by the Respondent there, and thus generate profit for the Respondent or for a third party.
Taking all the above into account, and in the lack of any contrary evidence or even allegation of any actual or contemplated good faith use of the Domain Name, the Panel is prepared to accept that through the above conduct the Respondent has registered and uses the Domain Name in bad faith, by intentionally attempting to attract, for commercial gain, Internet users to the website at the Domain Name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of this website. (Paragraph 4(b)(iv) 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 Domain Name <electroluxrefrigeratorreviews.info> be transferred to the Complainant.
Dated: November 16, 2011