WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. CoreCentric Solutions, Inc / CG Industries, Ltd.
Case No. D2011-1811
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is CoreCentric Solutions, Inc of Glendale Heights, Illinois, United States of America / CG Industries, Ltd. of Drums, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electroluxrfr.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 24, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 4, 2011, Network Solutions, 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 the Complainant on November 9, 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 November 14, 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 November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
On December 7, 2011, the Center received an email communication from the Respondent. The Center acknowledged receipt on December 8, 2011, and on the same day the Complainant replied to the Respondent’s email communication. Further email communications between the Respondent and the Complainant were received on December 8 and 9, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 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 Complainant, a Swedish corporation, founded in 1901, is a leading producer of kitchen and cleaning appliances. The Complainant sells more than 40 million products to customers in 150 countries every year. In 2010, the Complainant had sales of 106 billion Swedish Crowns (SEK) and it has 52,000 employees worldwide. Its refrigerators, dishwashers, washing machines, vacuum cleaners and cookers are sold under brands such as ELECTROLUX, AEG ELECTROLUX and several other brands.
The Complainant has registered the trademark ELECTROLUX as a word mark and as a device mark in several classes in more than 150 countries. The Complainant owns, among others, the following trademark registrations:
United States Trademark Registration No. 0908002 ELECTROLUX, filing date of November 10, 1969, covering goods and services in Int. Class 21.
European Community Trademark No. 000077925 ELECTROLUX, filing date of April 1, 1996, covering goods and services in Int. Classes 3, 7, 8, 9, 11, 16, 20, 35 and 37.
The Complainant owns also several hundreds of ELECTROLUX – domain names including <electrolux.com>, <electrolux.net>, <electrolux.info> and <electrolux.org>.
The disputed domain name was registered on May 18, 2011. The disputed domain name resolves to a website displaying the home page of CoreCentric Solutions Inc.
The Respondent’s website informs the Internet user that the Respondent is the exclusive authorized repair service depot for Whirlpool and Bosch brands – both competitors of the Complainant. The Respondent also operates websites at the domain names <boschrfr.com> and <whirlpoolrfr.com>. Under a link “Repair Service”, the option “All Brands” is displayed. On this page, many brands of household appliances are displayed, including the Complainant’s. The names, logo and trademark of which are also displayed.
The Complainant has been successful in numerous proceedings under the Policy to protect its trademark. One of the latest is the decision regarding the domain name <electroluxic.com> – Aktiebolaget Electrolux v. Electrolux International (HK) Co. Ltd., WIPO Case No. D2011-0752.
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 disputed domain name violated the Complainant’s rights in its trademark. The Complainant requested a voluntary transfer of the disputed 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. On September 12, 2011, the Complainant sent the email and “cease and desist” letter to the only email address listed on the home page connected to the disputed domain name.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights. The dominant part of the disputed domain name, the word “electrolux”, is identical to the registered ELECTROLUX trademarks in which the Complainant has rights. The addition of the suffix “rfr” has no effect on the overall impression of the dominant part of the name “electrolux”. The Complainant cites Dr. Ing. h.c.F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, where the panel found that confusing similarity is generally recognised when different prefixes and suffixes are added to well-known trademarks.
The Respondent has no rights or legitimate interests in the disputed domain name. No license nor any other authorization has been granted to the Respondent for the use of Complainant’s ELECTROLUX marks as a domain name: the Respondent has no trademark rights in such marks. No evidence regarding any of the situations under paragraph 4(c) of the Policy has been shown.
The disputed domain name was registered and is being used in bad faith. Since the disputed domain name is connected to a website offering services for household appliances and their repair, there is a real likelihood of confusion by Internet users with the Complainant’s mark as to the source, sponsorship or affiliation or endorsement of the Respondent’s website. This is especially so since the Respondent displays the Complainant’s trademark on the website.
The Respondent’s pattern of conduct is to trade on well-known marks to attract Internet users to the website, as can be seen from the domain names it registered including brands of competitors of the Complainant.
The Respondent did not file a Response but emailed the Center on December 7, 2011, inter alia, in these terms:
“To Whom it may concern.
We are a service provider for electronic appliance controls for the Major Home appliances in the US market.
We provide Reverse Logistics, Remanufacturing and RFR (return for repair services) services for parts that are ‘No Longer Available’
We are willing to relinquish this domain as long as a valid reason is provided.
Await your decision on next steps.
This email was referred by the Center to the Complainant. The Complainant’s authorized representative advised that the valid reasons for transferring the disputed domain name were contained in the Complaint which had been transmitted to the Respondent. No further action was taken by the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. The whole trademarked word ELECTROLUX is reproduced in the disputed domain name. The addition of the letters “rfr” does nothing to diminish the impact of the trademark.
The Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority or right to reflect its trademark in a domain name. In the absence of a Response, that fact means that a prima facie case has been made out that paragraph 4(a)(ii) of the Policy has been satisfied.
It would have been open to the Respondent to have pleaded one or more of the defences available under paragraph 4(c) of the Policy. However, the Respondent has not done that. Rather, the email sent on behalf of the Respondent and referred to above indicates that the Respondent must have doubts about the legitimacy of its use of the disputed domain name.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered as recently as May 18, 2011 – years after the Complainant acquired trademark rights.
The Respondent’s use of the disputed domain name incorporating the Complainant’s trademark which resolves to a website with links to the products of the Complainant’s competitors clearly indicates the circumstances envisaged by paragraph 4(b)(iv) of the Policy, i.e., by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to its 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 its website or location of a product. Any Internet user visiting the website would be confused into thinking that the website had some affinity or application with the Complainant.
The inference to be drawn from the Respondent’s operations is that it is trying to benefit from the fame of the Complainant’s mark. The email referred to earlier fortifies this conclusion. This case is the current last in a long line of instances where the Complainant’s world-renowned mark has been used illegitimately.
Accordingly, bad faith registration and use are clearly demonstrated. Paragraph 4(a)(iii) of the Policy is satisfied.
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 <electroluxrfr.com> be transferred to the Complainant.
Hon. Sir Ian Barker
Dated: December 20, 2011