WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Amazone Cellindo, Registration Private/ Domains by Proxy, Inc.
Case No. D2011-1672
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Amazone Cellindo, Registration Private of Cirebon, West Java, Indonesia and Domains by Proxy, Inc. of Scottsdale, Arizona, United Sates of America.
2. The Domain name and Registrar
The disputed domain name<electroluxnimbleuprightvacuum.com> is registered with GoDaddy.com, Inc.
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 the registrar GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, October 3, 2011, GoDaddy.com, Inc. 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 10, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 13, 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 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on November 24, 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, AB Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Complainant 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. In addition, Complainant is the market leader in many of the individual product categories in which they compete.
Complainant is the owner of the trademark ELECTROLUX.
Complainant is a global leader in home appliances and appliances for professional use. Complainant products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE.
In 2009, Complainant had sales of SEK 109 billion and 51 000 employees.
5. Parties’ Contentions
Complainant informs that the trademark ELECTROLUX has due to extensive and long-term use on products and services of the Complainant and, in connection therewith, by tremendous costs incurred by the Complainant in connection with the production, distribution and advertising with respect to the products and services that are marked by the trademark 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 trademark and the products and services designated by this trademark are connected with good reputation and international recognition.
Complainant states that it has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the disputed domain name.
Complainant alleges that it has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these; <electrolux.com>, <electrolux.net>, <electrolux.info> and <electrolux.org>.
Complainant also alleges that the awareness of the trademark ELECTROLUX is considered in the whole Community to be significant.
In view of the above, Complainant argues that Respondent cannot have been unaware of the trademark at the time of registration or thereafter.
Complainant states that Electrolux is a global company and run its business all over the world, including in the United States and Europe.
Complainant also states that the mark ELECTROLUX is in possession of substantial inherent and acquired distinctiveness.
Complainant argues that according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”) confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), 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 (i.e. regardless of the list of the products and services for which the trademark is registered).
Therefore, Complainant also argues that the protection for ELECTROLUX goes far beyond appliances and equipment for kitchen, cleaning and outdoor use and goods similar to equipment for kitchen, cleaning and outdoor use.
Complainant informs that the disputed domain name <electroluxnimbleuprightvacuum.com> comprises the word “electrolux”, which is identical to the registered trademark ELECTROLUX.
Complainant also informs that the fame of the trademark has been confirmed in previous UDRP decisions, for example; AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777. “The first domain name in dispute, <electrolux-aeg-servisi.com>, adopts two of Complainant’s widely known trademarks”.
Complainant states that the addition of the suffix “nimbleuprightvacuum” is not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark.
In addition, Complainant argues that the suffix “nimbleuprightvacuum”, which describes one of the Complainant’s product lines, “Upright Vacuums” with products named “Nimble”, is rather fitted to strengthen the impression that the domain name is in some way connected to Complainant.
Complainant alleges that in, Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, it was stated that is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of prefixes and suffixes.
Complainant also alleges that the addition of the top-level domain (Tld) “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to determine the confusing similarity of the trademark.
Complainant states that anyone who sees the domain name is bound to mistake it for a name related to Complainant.
Complainant also states that the likelihood of confusion includes an obvious association with the trademark of Complainant. With reference to the reputation of the trademark ELECTROLUX there is a considerable risk that the trade public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with Complainant.
Therefore, Complainant argues that by using the trademark ELECTROLUX as a dominant part of the domain name, Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant’s trademark.
Additionally, Complainant informs that it is the owner of the world wide registered trademark ELECTROLUX and that Respondent has registered the domain name which is confusingly similar to the trademark owned by Complainant.
Complainant alleges that it has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name. It is also clear, that no license or authorization of any other kind, has been given by Complainant to Respondent, to use the trademark.
Complainant also alleges that Respondent registered the domain name on May 13, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. This Registration date is several decades after the world wide trademark registrations of the mark ELECTROLUX.
Complainant informs that it has 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 also informs that Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. Instead Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site where sponsored links are displayed. At the bottom of the webpage the text “Copyright © 2011 Electrolux Nimble Upright Vacuum All rights reserved.” is inserted. This text could be seen as if Respondent claims to have rights in the trademark ELECTROLUX.
Complainant argues that by doing this, Respondent is misleading Internet users to a commercial web site and consequently, Respondent is tarnishing the trademark ELECTROLUX.
Complainant states that Respondent is trying to sponge off Complainant’s world famous trademark.
Complainant also states that referring to the above mentioned Respondent has no rights or legitimate interest in respect of the domain name.
Complainant informs that first tried to contact Respondent on July 21, 2011 through a cease and desist letter, sent by email. Complainant also informs that it has advised Respondent that the unauthorized use of the ELECTROLUX trademark within the domain name violated the Complainant’s rights in said trademark.
Complainant asserts that it has requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees. No reply was received so the Complainant sent a reminder on August 17, 2011, however without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful Complainant chose to file a complaint according to the UDRP process.
Complainant also asserts that it has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.
Complainant alleges that there is no doubt that Respondent was aware of the rights Complainant has in the trademark ELECTROLUX and the value of said trademark, at the point of the registration.
Furthermore, Complainant also argues that by using the domain name, 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.
Consequently, Complainant states that by referring to the above-mentioned Respondent must be considered to have registered and be using the domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s ELECTROLUX trademark. The Panel finds that the mere addition of the suffix “nimbleuprightvacuum” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name.
Under the Policy the addition of the “.com” top level domain is irrelevant when considering the issue of confusing similarity between a complainant's trade mark and a domain name.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name that contains in its entirety Complainant’s ELECTROLUX mark.
Complainant has made a prima facie case in support of its allegations and, therefore, the burden of production shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the complaint was filed, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site where sponsored links are displayed. The Panel finds that this is not a bona fide offering of goods and services.
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
Respondent has intentionally registered the disputed domain name which reproduces Complainant’s well-known trademark ELECTROLUX. By the time the disputed domain name was registered, it is unlikely that Respondent did not have knowledge of Complainant’s rights on the trademark ELECTROLUX.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its ELECTROLUX registered trademark when the disputed domain name was registered. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the subject domain name.
Also, under the Policy, it is evidence of bad faith that, 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, Policy paragraph 4(b)(iv).
This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.
In light of these, the Panel finds Respondent registered and used the disputed domain name in bad faith. Complainant has established the third element of the Paragraph 4(a) 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 <electroluxnimbleuprightvacuum.com> be transferred to Complainant.
Dated: December 8, 2011