WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Registrant : Ni Hao, Two Stooges LLC. / Moniker Privacy Services
Case No. D2011-1671
1. The Parties
Complainant is AB Electrolux, Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Registrant : Ni Hao, Two Stooges LLC, Nanjing, Jiangsu, China / Moniker Privacy Services, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electroluxinsentives.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2011. On October 3, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On October 5, 2011 Moniker Online Services, LLC. 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 Complainant on October 11, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 12, 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 14, 2011.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on November 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
Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919 and is a world leading producer of appliances and equipment for kitchen and cleaning. Complainant is also one of the largest producers in the world of similar equipment for professional users, and also the market leader in many of the individual product categories in which Complainant competes.
Complainant sells more than 40 million products to customers in 150 countries every year. Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers and they are sold under brands such as ELECTROLUX, AEG, AEG-ELECTROLUX. In 2009, Complainant had sales of SEK 109 billion and 51 000 employees.
The trademark ELECTROLUX has, due to extensive and long-term use on products and services of Complainant and, in connection therewith, by tremendous costs incurred by Complainant in connection with the production, distribution and advertising with respect to the products and services that are marked by the trademarks, acquired the status as a well-known trademark within the areas for appliances and equipment for kitchen, cleaning and outdoor products. As a result, the trademarks and the products and services distinguished by this trademark are connected with good reputation and international recognition.
Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world.
In particular, Complainant owns the United States trademark registration for ELECTROLUX, No. 195691 registered in 1925, the United States trademark registration for ELECTROLUX No. 908002 registered on February 16, 1971 and the CTM registration for ELECTROLUX No. 77925 registered on September 16, 1998. Moreover Complainant is the owner of several Chinese trademark registrations for ELECTROLUX.
The trademark ELECTROLUX was registered long before the registration of the disputed domain name.
Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, and among these <electrolux.com>.
Respondent appears to have registered the disputed domain name <electroluxinsentives.com> on January 25, 2011. The disputed domain name <electroluxinsentives.com> resolves to a parking web page.
Complainant sent a cease and desist letter to Respondent on April 20, 2011, requesting a voluntarily transfer of the disputed domain name and offering compensation for the registration expenses.
Since no response was received from Respondent, Complainant sent a reminder on May 2, 2011, even remained without any reply.
5. Parties’ Contentions
Complainant contends that the ELECTROLUX trademark acquired the status of well-known and reputed trademark with a substantial and widespread reputation throughout the world. Moreover the ELECTROLUX trademark has substantial inherent and acquired distinctiveness.
Complainant contends that Respondent was aware of the rights of Complainant in the ELECTROLUX trademark and of the value of said trademark when it registered the disputed domain name.
Complainant contends that the disputed domain name is confusingly similar to Complainant's ELECTROLUX trademark. The dominant part of the disputed domain name comprises the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by Complainant as a trademark and domain names in numerous countries all over the world. The addition of the suffix “insentives” 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. Also the addition of the top-level domain (Tld) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is, therefore, irrelevant to determine the confusing similarity to Complainant’s trademark ELECTROLUX.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has no license or other authorization from Complainant to use the ELECTROLUX trademark.
Complainant has also not found anything that would suggest that Respondent has been using ELECTROLUX in any other way that would give him any legitimate rights in the name. Consequently, Respondent may not claim any rights established by common usage.
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but he has intentionally chosen a domain name based on a registered trademark in order to generate pay-per-click revenues.
Complainant states that Respondent registered and is using the disputed domain name in bad faith.
There is no doubt that Respondent was aware of Complainant’s rights in the trademark ELECTROLUX and of the value of said trademark when he registered the disputed domain name; indeed the ELECTROLUX trademark is worldwide known, also in the United States of America and in China, as it results from the printouts of Complainant’s web site “www.electrolux.com.cn”.
There is no connection between Respondent and Complainant. By choosing a domain name corresponding to a well-known trademark, Respondent is seeking to attract Internet users for his own commercial gains, by creating a likelihood of confusion with the Complainant’s widely known mark. Indeed Respondent profits from pay-per-click revenues generated by the web site linked to the contested domain name.
Consequently, Respondent must be considered to have registered and be using the domain name in bad faith.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name registered by Respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Having considered Complainant’s submissions and the evidences adduced with Complaint, this Panel finds that Complainant has established that it owns prior rights in the ELECTROLUX trademark and the disputed domain name is confusingly similar to Complainant's ELECTROLUX trademark.
Complainant owns numerous ELECTROLUX trademark registrations all over the world (in more than 150 countries), in the United States and in China, where the actual registrant of the disputed domain name seems to be located. This Panel took a look at the list of Chinese trademark registrations owned by Complainant, in the Chinese trademark register database, and checked out that all the Chinese trademark registrations for ELECTROLUX precede the date upon which Respondent registered the disputed domain name (i.e. January 25, 2011). In particular, the first Chinese trademark registration for ELECTROLUX No. 70055 was registered on January 13, 2002.
In the present case, the disputed domain name incorporates Complainant’s well-known and widely-registered trademark ELECTROLUX with the addition of the word ”insentives” that, in the Panel’s view, is an incorrect transliteration of the English word ‘incentives’. The addition of the word “insentives” is purely descriptive and is not enough to prevent confusing similarity between the disputed domain name and the incorporated well-known trademark but may actually increases the likelihood of confusion (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce Plc v. Hallofpain, WIPO Case No. D2000-1709, PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865).
See, also, Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the [p]anel held that‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services’. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
With regards to the suffix “.com” (which indicate that the domain name is registered in the “.com” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; rab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / email@example.com, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457) it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
In light of the above reasoning, the Panel finds that the disputed domain name registered by Respondent is confusingly similar to Complainant’s well-known and widely-registered trademark ELECTROLUX, in which Complainant has demonstrated, to the satisfaction of the Panel, that it has rights for several years; therefore the Panel finds that Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent did not reply to Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by Complainant.
In particular, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the record that Respondent has any rights or legitimate interests in the disputed domain name. Respondent has not been and is not commonly known by the ELECTROLUX mark or the disputed domain name, and it has not acquired any trademark or service mark rights in that name or mark. Moreover, Respondent was not licensed or otherwise permitted to use Complainant’s widely-known and widely-registered ELECTROLUX trademark.
Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. The website to which the disputed domain name <electroluxinsentives.com> resolves is a parking home page, where several pay-per-click links exist. Also in this regard, the Panel shares Complainant’s view and believes that by registering the disputed domain name Respondent clearly intended to profit from the use of the disputed domain name which is confusingly similar to Complainant’s trademark ELECTROLUX, diverting Internet users to websites where pay-per-click links exist and generate gains for Respondent. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i) (see, besides UDRP WIPO decisions cited by Complainant, in particular: The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).
Finally, no response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference that: “non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element under paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
Complainant’s ELECTROLUX trademark and activity are very widely-known throughout the world and considering the widespread use and reputation of ELECTROLUX name and mark, also in China where Respondent seems to reside and Complainant’s prior trademark registration. Respondent most likely was aware of it when it registered the disputed domain name.
The choice of the disputed domain name by Respondent, in the Panel’s view, could not result from a mere coincidence.
In line with other prior UDRP decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any rights or legitimate interests and lacking any contrary evidence by Respondent, the registration of the disputed domain name confusingly similar to Complainant’s widely-known trademark may suggest opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411 mentioned in the Complaint).
Moreover, as referred by Complainant, Respondent did not reply to Complainant’s cease and desist letter (sent on April 20, 2011) and to the subsequent reminder (sent on May 2, 2011). According to previous UDPR decisions, this Panel finds that also “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith” (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc, WIPO Case No. D2002-0787, cited by Complainant).
Indeed, Respondent has maintained the website at the disputed domain name despite the Complainant’s objections.
Such silence, ongoing cybersquatting, and dilution are further evidence of Respondent’s bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242).
Concerning the use of the disputed domain name, Complainant has proven that the disputed domain name <electroluxinsentives.com>, resolves to a landing page that hosts pay-per-click sponsored links to web-sites at which competitive services are offered. This activity constitutes evidence of bad faith registration and use of the disputed domain name. See McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353 (“the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy [...]”).
Indeed, by exploiting the renown of the ELECTROLUX trademark, Respondent diverts Internet users looking for Complainant’s marks and website and seeks to gain profit out of the disputed domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominiosCase, WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).
In this Panel’s view, according to the previous WIPO UDRP decision cited by Complainant, “a potential consumer accessing the disputed domain name would have the legitimate expectation that he was communicating with the Complainant, and would, consequently be misled, to the possible detriment of the Complainant because of the existence of sponsored links. This, in the Panel’s view, justifies a finding that the disputed domain name has been used in bad faith” (see Aktiebolaget Electrolux v. DomainsByProxy.com / Plessers Appliances, WIPO Case No. D2011-0317).
In light of the above circumstances, the Panel is satisfied that the third element under paragraph 4(a) of the Policy is met and that the disputed domain name <electroluxinsentives.com> was registered and is being used in bad faith.
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, <electroluxinsentives.com> be transferred to Complainant.
Dated: December 7, 2011