WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. FPT Internet Data Services, Hoang Van Cong
Case No. D2012-0598
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is FPT Internet Data Services, Hoang Van Cong of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <suachuamaygiatelectrolux.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2012. On March 23, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On March 26, 2012, OnlineNic, Inc. d/b/a China-Channel.com. 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 March 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 2, 2012. 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 had 52,000 employees worldwide. Its refrigerators, dishwashers, washing machines, vacuum cleaners and cookers are sold under brands such as ELECTROLUX, AEG, ZANUSSI, EUREKA, and FRIGIDAIRE and several other brands.
The Complainant owns a vast trademark portfolio consisting of registrations from around the World. The Complainant owns, among others, the following trademark registrations:
Next renewal date
November 26, 1993
November 26, 2013
January 28, 2004
January 28, 2014
March 20, 1975
March 20, 2015
The domain name <suachuamaygiatelectrolux.com> was registered on October 13, 2011.
5. Parties’ contentions
The Complainant contends that:
i. The domain name is identical or confusingly similar to the trademark ELECTROLUX
a) It is the owner of two trademark registrations in the territory of the Respondent: registration No. 13319 and registration 63104. However, the Complainant does not indicate what products or services they cover.
b) The disputed domain name comprises entirely the word "electrolux", which is identical to the registered trademark ELECTROLUX.
c) The addition of the term “Sửa chữa máy giạt” is not relevant to determine confusing similarity.
d) The gTLD “.com” does not have any impact on the dominant portion of the disputed domain name.
e) Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.
ii. The Respondent has no rights to, or legitimate interests in the disputed domain name.
a) The Respondent has not executed any license agreements with the Complainant to use the trademark ELECTROLUX, which amounts to not having a bona fide interest in the domain name.
b) The Respondent is falsely implying a connection with the Complainant.
c) The Respondent has no rights or legitimate interests in the disputed domain name. Neither a 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.
iii. The Respondent registered and is using the domain name in bad faith.
The lack of response to the Cease and Desist letter that the Complainant sent to the Respondent constitutes an assumption of bad faith.
a) The Respondent does not fulfill the requirements for a bona fide conduct set out in the Oki Data case (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), because the Respondent’s site has no disclaimer dissociating itself from the Complainant.
b) The Registration Agreement for the disputed domain name states that the owner must not infringe legal rights of a third party. Because the Respondent is infringing upon trademark registrations of the Complainant, the Respondent is acting in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is obliged to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark 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.
As Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
A. Identical or Confusingly Similar
The trademark ELECTROLUX is fully incorporated within the disputed domain name <suachuamaygiatelectrolux.com>.
The Complainant has provided evidence showing that it owns a large number of ELECTROLUX trademarks in numerous jurisdictions worldwide, most of them registered well before the year 2011. According to the current record, long-standing trademark protection is also given in Viet Nam, where the Respondent is located.
The disputed domain name contains the addition of the Vietnamese terms “Sửa chữa máy giạt”, which stand for “Repairing Washing Machines” in English.
The incorporation of such generic terms does not negate the confusing similarity between the Complainant’s trademark and the disputed domain name. Moreover, the full inclusion of the Complainant’s trademark may even enhance the false impression that any offered product or service under the disputed domain name is linked to the Complainant.
The “.com” gTLD is merely instrumental, has no distinguishing capacity in the context of disputed domain name and does not alter the value of the trademark represented in the disputed domain name (see Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760).
Given the findings above, the Panel concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled, because the disputed domain name is confusingly similar to the trademark ELECTROLUX.
B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel formulated a test for determining whether a reseller can be making a bona fide offering of goods and services and thus has a legitimate interest in the disputed domain name. Under this test, the conduct of a respondent must comply with all of the following requirements:
(1) the respondent must actually be offering the goods of the complainant;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In the present case, the Respondent seems to be referring exclusively to the goods of the Complainant, passing the first prong of the test.
The Respondent's website only shows products labeled with the ELECTROLUX trademarks. Therefore, the Respondent passes the second prong of the test.
The website does not disclose any information regarding its relationship with the Complainant. The Respondent does not only fail to include a disclaimer dissociating itself from the Complainant, but on the website it includes phrases that read: "SỬA MÁY GIẶT ELECTROLUX| TRẠM BẢO HÀNH MÁY GIẶT ELECTROLUX | TRUNG TÂM BẢO HÀNH MÁY GIẶT ELECTROLUX | DIỄN ĐÀN KINH DOANH" which mean "ELECTROLUX WASHING MACHINE REPAIR | STATION WARRANTY ELECTROLUX WASHING MACHINE | WARRANTY CENTER ELECTROLUX WASHING MACHINE | FORUM BUSINESS" in English.
This label causes confusion as to the source of the Respondent’s site and services, and misleads Internet users regarding a possible endorsement, affiliation, or sponsorship regarding the Complainant and Complainant’s marks and products, in connection with the Respondent. Rights or legitimate interests cannot be created where the owner of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda, WIPO Case No. D2001-0067).
As for the fourth prong of the test, the Respondent is not trying to corner the market in all domain names. Hence, the Respondent passes the fourth step.
On applying the Oki Data criteria to the current proceeding, the Panel finds that the Respondent’s use of the Complainant’s marks in the disputed domain name is not associated with a bona fide offering of goods and services. The Respondent has taken positive action to generate confusion as to the source of Respondent’s site and services, and has done nothing to explain to the public that there is no identity between the Respondent and the Complainant, or that there is no affiliation or sponsorship between both parties. The third Okidata factor has not been met.
Therefore, the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, and thus Respondent cannot benefit from paragraph 4(c)(i) of the Policy.
The Respondent has not submitted evidence showing that it has been commonly known as <suachuamaygiatelectrolux.com>. The Complainant has proven that it is commonly and generally known as ELECTROLUX.
The Respondent has certainly used the disputed domain name with an intent for commercial gain to misleadingly divert consumers, by creating a confusion as to the source of the Respondent’s site or services, and a possible association with, or sponsorship from the Complainant. This is contrary to paragraph 4(c)(ii) of the Policy.
Therefore, the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
i. circumstances indicating that the Respondent registered or 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 your documented out-of-pocket costs directly related to the domain name; or
ii. the Respondent 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 you have engaged in a pattern of such conduct; or
iii. the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his/her/its website 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 website or location or of a product or service on your website or location.”
When the Respondent registered the disputed domain name, the Complainant held several trademark registrations in many jurisdictions around the world, including Viet Nam. The fact that the Respondent chose a domain that literally reads “Repairing Washing Machines Electrolux”, shows that he knew the Complainant and its trademarks. This is confirmed by the fact that the Respondent is extensively reproducing the Complainant’s logo throughout its web page. This is also confirmed by the fact that the Respondent knowingly posted a notice in its website, with the following phrases: “ELECTROLUX WASHING MACHINE REPAIR | STATION WARRANTY ELECTROLUX WASHING MACHINE | WARRANTY CENTER ELECTROLUX WASHING MACHINE”. Considering that the Respondent has not been granted a license by the Complainant to use the trademark ELECTROLUX, the adoption and subsequent use of the domain name in the abovementioned manner, cannot be in good faith.
In light of the above, by having the disputed domain name resolve to said website, the Respondent has fallen within the scope of paragraph 4(b)(iv) of the Policy, because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and services. The consuming public is likely to think that the Respondent is actually the source of ELECTROLUX related products and/or services, when this is not accurate. The Complainant is the real source. The Respondent has not undergone any efforts to prevent this confusion. On the contrary, the Respondent has posted phrases and even the Complainant’s logo, which fact confirms this confusion, and even generates more confusion. This attraction of users has taken place in a commercial environment: the rendering of the Respondent’s services. Therefore, this conduct constitutes bad faith.
The third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <suachuamaygiatelectrolux.com> be transferred to the Complainant.
Dated: May 16, 2012