WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. N/A, Rudi Sudrajat
Case No. D2011-2004
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is N/A, Rudi Sudrajat of Kalimantan, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <aegelectroluxlavamat.com> is registered with C.V. Jogjacamp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 15, 2011, the Center transmitted by email to C.V. Jogjacamp a request for registrar verification in connection with the disputed domain name. On November 23, 2011, C.V. Jogjacamp 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 November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 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.
On January 3, 2012, the due date for the Panel to forward its decision to the Center was extended to January 20, 2012, due to exceptional circumstances.
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 109 billion Swedish Crowns (SEK) and it has 55,100 employees worldwide. Its refrigerators, dishwashers, washing machines, vacuum cleaners and cookers are sold under brands such as ELECTROLUX, AEG, ELECTROLUX, FRIGIDAIRE and several other brands.
The Complainant has registered separate trademarks for ELECTROLUX, AEG and LAVAMAT as word marks and device marks in several classes in many countries. These trademarks were registered long before the disputed domain name was registered.
The Complainant’s trademark AEG signifies the initials of a long-established German manufacturer of whiteware which is owned by the Complainant. The AEG brand is also known worldwide.
The Complainant has trademark registrations in Indonesia for AEG and ELECTROLUX. LAVAMAT is a
sub-brand of AEG. The Complainant also owns hundreds of ELECTROLUX and AEG domain names in numerous countries.
The disputed domain name was registered on August 19, 2011.
The Respondent’s website redirects the Internet user to “www.amazon.de” where whiteware goods may be purchased – including the Complainant’s products. There are also sponsored links displayed on site.
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 <electroluxrfr.com> – Aktiebolaget
Electrolux v. CoreCentric Solutions, Inc / CG Industries, Ltd., WIPO Case No. D2011-1811.
The Complainant first tried to contact the Respondent on September 16, 2011, through a “cease and desist” letter, sent by email. The Complainant advised the Respondent that the unauthorized use of the AEG and ELECTROLUX trademarks within the disputed domain name violated the Complainant’s rights. 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 October 20, 2011. The Respondent replied saying he had no intention of violating the trademarks, that the disputed domain name generated USD 250 - 500 per month; that he would sell it for USD 1,200. The Complainant declined the offer and opined that the offer could be regarded as bad faith use.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical and confusingly similar to the three trademarks in which the Complainant has rights.
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 the Complainant’s marks in 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. According to the Complainant, the Respondent does not qualify to fulfill the requirements for a bona fide offering set out in the often-cited Oki Data case (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
These requirements are also included in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3. First, the Respondent cannot be considered as a reseller as he is not the actual reseller, according to the Complainant the reseller is Amazon.de and the Respondent is getting revenue when a visitor clicks through on the links provided. These links should therefore be considered as sponsored links. This sort of arrangement was discussed in LEGO Juris A/S v. Suka LLC, WIPO Case No. 2011-1057, regarding the domain names <legohalo.org> and <legospiderman.net> where the panel stated: “The Panel finds that no bona fide offering of goods and services can be found, when a site is using, without a license or authorization, a registered trademark as part of its name to indirectly solicit orders for products sold by others, even if the products finally sold are made by the Complainant.” The same argument should apply on this present case.
The Complainant alleges that the Respondent has intentionally chosen a domain name based on three registered trademarks in order to generate traffic to this site.
The Respondent did not file a Response.
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 identical to three registered trademarks AEG, ELECTROLUX and LAVAMAT in which the Complainant has rights. All three trademarked words are reproduced in the disputed domain name. Alternatively, in this Panel’s view a combination of registered trademarks in one domain name is confusingly similar. See Credit Industriel et. Commercial S.A. v. Richard J., WIPO Case No. D2005-0569).
The Complainant has accordingly 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 trademarks 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 referred to above, indicates that the Respondent must have doubts about the legitimacy of its use of the disputed domain name.
The Complainant has thus satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered as recently as August, 2011 – years after the Complainant acquired numerous trademark rights.
The Respondent’s use of the disputed domain name incorporating the Complainant’s trademarks which resolves to a website which sells the products of the Complainant and its competitors clearly indicates the circumstances envisaged by paragraph 4(b)(iv) of the Policy, i.e., “by using the 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 Respondent’s website had some affinity or application with the Complainant.
The clear inference to be drawn from the Respondent’s operations is that he is trying to benefit from the fame of the Complainant’s marks. His response to the Complainant’s cease and desist letter that was sent before filing the Complaint confirms this view. This case is the current last in a long line of instances where the Complainant’s world-renowned ELECTROLUX mark has been used illegitimately.
Accordingly, bad faith registration and use are clearly demonstrated in this case. The Respondent clearly knew of the fame of the Complainant’s trademarks at the time of registration and is using the disputed domain name in bad faith. 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 <aegelectroluxlavamat.com> be transferred to the Complainant.
Sir Ian Barker
Dated: January 17, 2012