WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Biniewicz Jerzy
Case No. D2012-1140
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Biniewicz Jerzy of Warszawa, Poland.
2. The Domain Name and Registrar
The disputed domain name <oelectrolux.com> is registered with Az.pl, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2012. On June 4, 2012, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the disputed domain name. On June 6, 2012, Az.pl, 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 the Complainant on June 6, 2012 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 June 7, 2012 naming Biniewicz Jerzy as Respondent.
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 June 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2012. On July 5, 2012, the Center notified the Respondent of the Amendment to the Complaint, and provided additional 20 days for the Respondent to submit its Response. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2012.
The Center appointed Zoltán Takács as the sole panelist in this matter on August 15, 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.
The language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
The Complainant is a global leader in home appliances and appliances for commercial use, selling more than 40 million products per year to customers in 150 countries. The Complainant is running its business all over the world, including Poland, where the Respondent appears to be from.
The Complainant has an extensive trademark portfolio throughout the world for the mark ELECTROLUX and marks comprising the word element Electrolux, e.g., Community Trademark Registration No. 000077925 ELECTROLUX, with the priority of April 1, 1996, among others for household and kitchen appliances.
The Complainant is the registrant of numerous top level and country code top level domain names, which consist and/or comprise the mark ELECTROLUX. The Complainant’s domain name <electrolux.com> was created on April 30, 1996. Since February 8, 1999 the Complainant Polish subsidiary Electrolux Poland S.P. Z.o.o. owns the domain name <electrolux.pl>.
The disputed domain name was obtained on December 28, 2011 and used as a connection to a commercial website “www.oelectrolux.com” which sold different non related Electrolux products, such as TVs and portable cameras. On this website the Respondent was using the word Electrolux in relation to the goods offered. In addition, the Respondent was also using the disputed domain name to redirect traffic to a commercial website ”www.kameryaparatycyfrowe.panasonicsklep.com”.
At the time of rendering this decision, the disputed domain name was connecting to the website “www.ask.com” a question answering focused web search engine. When one tries to open the website “www.oelectrolux.com” it is redirected to the connecting “www.ask.com” website and advertisements most relevant to the disputed domain name are displayed as sponsored links within the results on pay-per-click basis.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its ELECTROLUX trademark, and addition of the letter ”o” before the mark is not sufficient to avoid confusion between the disputed domain name and the ELECTROLUX trademark.
The Complainant further submits that it has not found that the Respondent has any registered mark or trade name corresponding to the disputed domain name. The trademark ELECTROLUX is the property of the Complainant, and no license or any other authorization has been given by the Complainant to the Respondent to use the ELECTROLUX trademark in the disputed domain name.
The Complainant also contends that the disputed domain name was registered and used in bad faith, since it functioned as a connecting page to a commercial website selling various non-related Electrolux products with intent to generate income for the Respondent riding on recognition of the ELECTROLUX trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in the WIPO UDRP Panel Decisions, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a respondent’s default does not automatically result in a decision in favor of the complainant.
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed with the complaint, namely:
(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 and registrant of the disputed domain name has no rights or legitimate interest in respect of the domain name, and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under this paragraph, there are two requirements which the Complainant must establish, first that it has rights in a trade or service mark, second that the disputed domain name is identical or confusingly similar to the mark.
It has been a consensus among the UDRP panels that if the complainant owns a registered trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds numerous registrations for the mark ELECTROLUX throughout the world. For the purpose of this proceeding, the Panel established that the Complainant’s valid Community Trademark Registration No. 000077925 ELECTROLUX with priority of April 1, 1996 satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in ELECTROLUX, the Panel next assessed whether the disputed domain name <oelectrolux.com> is identical or confusingly similar to the trademark.
According to paragraph 1.2 of the WIPO Overview 2.0 in order to satisfy the threshold for confusing similarity under the Policy, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
The disputed domain name <oelectrolux.com> fully incorporates the Complainant’s ELECTROLUX trademark, with addition of letter “o” before it.
The trademark ELECTROLUX is neither a common, nor descriptive word, it connects to the business and products of the Complainant. Mere use of the letter “o” in the disputed domain name otherwise identical with the Complainant’s ELECTROLUX trademark does not eliminate confusing similarity with the Complainant’s trademark. It is very likely that consumers will think that the disputed domain name <oelectrolux.com> is connected to, or associated with the Complainant, and for all these reasons; the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services before any notice to;
(ii) they have been commonly known by the domain name;
(iii) they 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.
In the present case, the Complainant submitted uncontested evidence that it holds well established rights in the trademark ELECTROLUX, and that the disputed domain name has been used to redirect consumers to a commercial website selling different non related Electrolux products but using the word Electrolux in relation to such goods.
The Complainant never gave permission to the Respondent to use its ELECTROLUX trademark in any way.
The Complainant’s prior rights in the trademark ELECTROLUX long preceded the date of registration of the disputed domain name.
Pursuant to the WIPO Overview 2.0, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of a domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer to this Panel any of the types of evidence set forth in paragraph 4(c) of the Policy. The above discussed evidence and facts submitted by the Complainant in regard to making out this requirement of the Policy convince the Panel that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of the domain name in bad faith. This nonexclusive list includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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;
(ii) you have 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;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 web site or location of a product or service on your website or location.”
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
On the contrary, by using the disputed domain name to connect consumers to a commercial website selling different non related Electrolux products whilst using the word “electrolux” in relation to such goods, the Respondent has been using the disputed domain name for commercial purposes, for its own financial gain.
In the view of the Panel this amounts to interference with the legitimate business of the Complainant and is indicative of bad faith registration and use of the disputed domain name.
Use of the disputed domain name at the time of rendering this decision, namely connecting it to a question answering focused, pay-per-click web search engine in the view of the Panel is further evidence of bad faith use of the disputed domain name.
Also, the fact that the registration and use of trademark ELECTROLUX in relation to Poland, where the Respondent is located, long preceded the Respondent’s creation of the disputed domain name leads the Panel to believe that the Respondent likely knew of the Complainant’s ELECTROLUX trademark and has registered the disputed domain name <oelectrolux.com> with intent to misappropriate the trademark’s value, which constitutes bad faith.
Prior to filing the Complaint, the Complainant sent a cease and desist email, advising of the unauthorized use of the ELECTROLUX trademark in the disputed domain and requested voluntary transfer of the domain name against a fee not exceeding the out of pocket registrations costs. The Complainant first received a short message from this email account advising “10 000 Euro and the domain name is yours”. Another message sent from this email account and signed JB confirmed that the sender expects 10 000,00 Euro. Initials JB could well be those of Jerzy Biniewicz, the Respondent in this administrative proceeding. The email account from which such email reply was sent appears to belong to Biniewicz Jerzy, the Respondent in this administrative proceeding. The Respondent’s offer to transfer the disputed domain name to the Complainant for consideration significantly exceeding out of pocket costs directly related to the domain name is clear evidence of bad faith registration and use of the disputed domain name.
For all the above discussed reasons the Panel finds that the disputed domain name has been registered and used in bad faith and that the Complainant has satisfied paragraph 4(a)(iii).
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 <oelectrolux.com> be transferred to the Complainant.
Dated: August 27, 2012