WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Ong Bui Trung Kien
Case No. D2012-1091
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Ong Bui Trung Kien of Ha Noi, VietNam.
2. The Domain Name and Registrar
The disputed domain name <chuyensuaelectrolux.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2012. On May 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 27, 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
Complainant, AB Electrolux, was founded in 1901 and is a worldwide producer of appliances and equipment for kitchen and cleaning. Complainant sells its ELECTROLUX products including refrigerators, dishwashers, washing machines, vacuum cleaners and cookers under the ELECTROLUX, AEG and AEG-ELECTROLUX trademarks in 150 countries including Vietnam.
Complainant has registered the trademark ELECTROLUX as a word and as a design mark in more than 150 countries worldwide including Vietnam. Complainant owns the following two trademark registrations, among others, for the ELECTROLUX trademark:
- Community Trademark Registration No. 000077925, registered September 16, 1998; and
- U.S. Registration No. 0908002, registered February 16, 1971.
Complainant registered numerous domain names that include its ELECTROLUX trademark including <electrolux.com> and <electrolux.vn>.
The disputed domain name was registered on February 27, 2012.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
The dominant part of the disputed domain name is identical to Complainant’s registered trademark.
The disputed domain name is confusingly similar to the trademark ELECTROLUX. The addition of the prefix “chuyensua” is not relevant and does not have any impact on the overall impression of the disputed domain name.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Complainant is unaware that Respondent has any registered trademarks or trade names corresponding to the disputed domain name.
Complainant has not given Respondent any licenses or authorization to use the ELECTROLUX trademark.
The website at “www.chuyensuaelectrolux.com” is meant to appear to be an official service center endorsed by Complainant. “Chuyên sua” translates as “specialized repairation.” Respondent is not an authorized repair center nor an authorized reseller. Respondent does not adequately disclose the relationship, or lack thereof, between Respondent and Complainant and therefore conveys the false impression that Respondent is an authorized service center of Complainant.
The three links at the bottom of Respondent’s website found at “www.chuyensuaelectrolux.com” link to other commercial websites similar to the one connected to the disputed domain name. These sites offer TVs and other commercial goods, not manufactured by Complainant. This clearly shows that the Respondent is not using the disputed domain name for a bona fide offering, as it is offering products not connected to the Complainant on the website connected to the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Complainant has received no reply to the cease and desist letter and the reminders thereto that it sent to Respondent.
Respondent was aware of Complainant’s ELECTROLUX trademark at the time it registered the disputed domain name.
The disputed domain name disrupts Complainant’s business by diverting consumers away from Complainant’s official website and is designed to attract users who are looking for Complainant’s services. Thus, Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complaint’s mark as to the source, sponsorship, affiliation or endorsement of the website.
There is no disclaimer stating the non-existing relationship between Complainant and Respondent.
The links to third party goods is further evidence that Respondent registered and is using the disputed domain name in bad faith as it is attracting visitors to online shops where goods not connected to Complainant are sold.
Respondent did not respond to the Complainant’s contentions and has thereby defaulted. The Complaint was sent to the email address and the physical address for the Registrant according to WhoIs information that was confirmed by the Registrar. Thus, Respondent appears to have been properly identified and notified of the Complaint.
Because of Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Given Complainant’s long use of the ELECTROLUX trademark and its ownership of a United States registration and a Community Trademark Registration for ELECTROLUX, the Panel finds that Complainant has trademark rights in the ELECTROLUX trademark.
The Panel also finds that the disputed domain name is nearly identical and at least confusingly similar to Complainant’s ELECTROLUX mark. The disputed domain name incorporates Complainant’s entire trademark and then adds the allegedly descriptive wording “chuyên sua” along with the “.com” generic top level domain (gTLD). Previous UDRP panelists have consistently held that the mere addition of descriptive wording to well-known marks, or confusingly similar derivatives thereof, does not avert a finding that a domain name is confusingly similar to a trademark. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”). The descriptive or generic wording (in this case the addition of “chuyên sua,” which allegedly translates to “specialized repairation”) does not prevent Complainant from satisfying the confusing similarity element. It is important, however, to emphasize that this element does not require consideration of the full set of tradional likelihood of confusion factors, such as similarity of the goods or channels of trade. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 1.1. Consequently, although addition of words that translate as “repair of” do not avoid a finding that Complainant satisfies Policy, paragraph 4(a)(i), the word “repair” could in some circumstances be consistent with a bona fide use, the Panel turns to the next issue.
B. Rights or Legitimate Interests
In order for a respondent to demonstrate rights or legitimate interests in a domain name, it must show:
(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.
Complainant urges that it has offered prima facie evidence that Respondent has not used the disputed domain name in connection with a bona fide offering of goods services. Specifically, Complainant alleges, and Respondent does not deny, that Respondent is not an authorized or licensed repair service, and, therefore, that Respondent’s offering is not bona fide. However, the Panel does not find this necessarily sufficient to make a prima facie case. The Policy requires that Respondent’s services be “bona fide; ” not that it be “authorized” or “licensed.” While the issue does not appear to be entirely settled, this Panel chooses to follow the line of cases that recognizes that the services of “unauthorized” or unofficial service providers may nonetheless be considered bona fide at least for purposes of the Policy. See WIPO Overview 2.0, Section 2.3 citing, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524. This holding makes imminent sense, as it is understood worldwide that repair services are often independent entrepreneurs contractually unaffiliated with the brands they service. These businesses provide competition that is generally viewed as important to economies worldwide and there is no reason to inhibit their ability to identify their services to consumers. Given this, it is hard to understand how merely proving that a domain name owner is not “authorized” suffices to establish a prima facie case and shift the burden to Respondent.
Complainant also alleges that Respondent’s website is meant to appear to be “an official service center endorsed and sponsored by the Complainant.” But Complainant points to no evidence of what Respondent “meant” or to any. particular aspect of Respondent’s page that causes it to appear “official.” Indeed, the only evidence in the record is a printout of a few pages from Respondent’s website. The Panel finds nothing on these pages that suggests that the vendor is “official.” On the contrary, Respondent does not use the ELECTROLUX logo on the challenged pages, and the font is plain and not a conspicuous copy of the Complainant’s “official” font. True, the ELECTROLUX mark appears on the pages, but the mere presence of the mark ELECTROLUX is not enough to make it appear “official.” This Panel is not willing to go so far, since so holding risks eviscerating any right to make nominative or referential fair use of the trademark.
Nonetheless, Respondent does not satisfy the well-known standards articulated in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903. To be considered bona fide:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the website only to sell the trademarked goods (otherwise its activities could be viewed as a ‘bait and switch’ operation);
(iii) the respondent’s website should accurately disclose the respondent’s relationship with the trademark owner; it should not falsely suggest that it is that of the trademark owner, or that it is the official site;
(iv) the respondent must not try to corner the market in domain names pertaining to the trademark.
Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903.
Respondent fails two of these tests. First, Complainant alleges that Respondent does not publish a disclaimer on the challenged pages. To be sure, Oki Data requires that the accused website accurately disclose its relationship to Complainant and many cases have found the absence of a disclaimer to be virtually dispositive against bona fide use. But it is not clear why this should be so. Applying United States law, the United States Court of Appeals for the Ninth Circuit held that, in nominative fair use cases, before a duty to disclaim arises, there must first be evidence that there is a likelihood of confusion (as determined by a court under a multi-factor analysis) that needs to be corrected. Toyota Motor Sales U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176-77 (9th Cir 2010). However, this may be, the UDRP decisions in any event generally require a disclaimer, and, given that neither party here is from the United States and the issue has not been briefed, this is not a case in which it is necessary for the Panel to consider further this issue.
Second, Complainant asserts that Respondent links to other pages where non-Electrolux goods are sold. Unrebutted, this allegation defeats any otherwise applicable bona fide fair use defense..
Consequently, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent was obviously aware of Complainant’s long established rights in the ELECTROLUX trademark when it registered the disputed domain name on February 27, 2012. Respondent’s website contains many photographs of ELECTROLUX branded products and some competing products. This supports a finding of bad faith registration. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. HostMonster.com INC / Stephen Lee, WIPO Case No. D2010-1355. See also, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith); AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440. The Panel finds that Respondent intended to exploit the fame of Complainant’s mark to attract for commercial gain Internet users to its website.
Complainant’s allegation of bad faith use is not rebutted. Under paragraph 4(b)(iv) of 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.”
The Panel finds this apposite here, and, consequently, finds that Complainant has satisfied the requirement of paragraph 4(a)(iii) 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 domain name <chuyensuaelectrolux.com> be transferred to the Complainant.
Lawrence K. Nodine
Dated: July 18, 2012