WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Cty DV CN So 1 Viet Nam
Case No. D2012-1141
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Cty DV CN So 1 Viet Nam of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <suamaygiatelectrolux.net> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On June 5, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.
The Center appointed Keith Gymer as the sole panelist in this matter on July 5, 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, Aktiebolaget Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Aktiebolaget Electrolux is a world-leading producer of kitchen appliances and equipment for cleaning. The Complainant is also one of the largest producers in the world of similar equipment for professional users. The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under trademarks such as ELECTROLUX, AEG, AEG-ELECTROLUX.
The Complainant is the proprietor of numerous trademark registrations for ELECTROLUX marks in over 150 countries around the world, in plain text and in various combination forms, including Vietnamese trademark registrations for E Electrolux, e.g.:
Vietnamese Registration 4-0013319, Classes 7, 9 & 11, dating from 1994
Vietnamese Registration 4-0063104, Classes 3, 7, 8, 9, 11, 21, 25, 28, 35, 37 & 39 dating from 2005
The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, including, among these: <electrolux.com>, <electrolux.vn> (registered in 2010).
The Domain Name, <suamaygiatelectrolux.net>, was registered in the name of the Respondent, Cty DV CN So 1 Viet Nam on February 20, 2012.
The Domain Name has been used for a website, in Vietnamese: “www.suamaygiatelectrolux.net”.
5. Parties’ Contentions
The Complainant’s case is based on the following grounds:
The trademark ELECTROLUX has acquired the status as well-known trademark for appliances and equipment for kitchens, cleaning and outdoor products, due to extensive and long-term use and tremendous advertising with respect to the products and services that are provided under the trademark. Consequently, the ELECTROLUX name and mark has an international reputation and recognition.
The Complainant has registered the trademark ELECTROLUX as a word and figurative mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the Domain Name.
The awareness of the trademark ELECTROLUX is therefore considerable. The Respondent cannot have been unaware of the trademark at the time of registration or thereafter.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The dominant part of the Domain Name, <suamaygiatelectrolux.net>, comprises the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world, including in Viet Nam.
The Domain Name is confusingly similar to the trademark ELECTROLUX. The addition the prefix “suamaygiat” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name, the word “electrolux”, instantly recognizable as a world famous trademark.
The prefix “suamaygiat” is written Sửa máy giặt in Vietnamese. “Sửa máy giặt” seems to mean “repair of washing machines” in Vietnamese.
The prefix thus implies a connection to the Complainant, since it is widely known for conducting business with washing machines and for the service and repair of the same. The combination with this prefix strengthens the impression that the Domain Name belongs to, or is affiliated with Complainant.
In AB Electrolux v. Ong Nguyen Huu Vinh, WIPO Case No. D2011-0318 regarding a similar domain name <suamaygiatelectrolux.com> the panel held; “Although the combined word “suamaygiat” is quite long, the trademark ELECTROLUX still appears very clearly, even dominantly due to its notoriety. At least at first sight, a certain affiliation between the two Parties may be expected by an Internet user.”
The same analysis could be applied in this case as well. The addition of the top-level domain (TLD) “.net” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity of the trademark.
To summarize, according to the Complainant, anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark ELECTROLUX there is a considerable risk that the public will perceive the Respondent’s Domain Name either as a domain name owned by the Complainant, or that there is some kind of commercial relation with the Complainant. By using ELECTROLUX as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. No licence or authorization of any other kind to use the trademark has been given by the Complainant to the Respondent.
The Respondent registered the Domain Name on February 20, 2012. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. The Complainant has also not found anything that would suggest that the Respondent has been using ELECTROLUX in any other way that would give it rights or legitimate interests in the Domain Name. Consequently the Respondent may not claim rights or legitimate interests established by common usage. The Domain Name is connected to the website of a repair business called BẢO DƯỠNG VÀ BẢO TRÌ TẠI HÀ NỘI. The Respondent has intentionally chosen a domain name based on a registered trademark which connects to a website appearing to be an official service center endorsed or sponsored by the Complainant. However, the website also displays several of the Complainant’s competitors brands, including LG, Sharp, Toshiba, among others. By doing this, the Respondent is misleading Internet users to a commercial web site. This is not a bona fide offering of goods or services.
The Respondent is trying to sponge off the Complainant’s world famous trademark. In the recently rendered decision AB Electrolux v. Karaca Grup Ltd. Sti, WIPO Case No. D2011-2626 regarding <444electrolux.com> and <444aeg.com>, with similar circumstances to this case, the panel stated; “Further, this Panel finds that without express authority of the relevant trademark holder, a right to resell or distribute that trademark holders’ products does not create a right to use a domain name that wholly incorporates the relevant trademark. The Respondent is not an authorized repair center, nor has the Complainant authorized the Respondent to use the Trademarks as a domain name. The statement that the Respondent is a specialized repair center of the products bearing the Trademarks has not in any way whatsoever been substantiated.”
In Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031 the panel held; “Indeed, in the view of the Panel, the adoption by the Respondent of a domain name identical to the Complainant’s trademark ELECTROLUX inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below), and the consequential tarnishing of the Complainant’s trademark ELECTROLUX and also the valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.”
The same conclusion should be made in this case as well.
Further, the Respondent does not qualify under the criteria laid down in the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), and described in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
All criteria need to be applied. If the Respondent were to be treated as an authorized reseller, the Panel would probably apply the Oki Data Test. However, it is important to point out that, in the current case, the Respondent is not an authorized reseller. Nevertheless, the Oki Data test has been widely adopted by previous UDRP panels and cited even if it refers to a non-authorized reseller, see e.g. LEGO Juris A/S v. Daniel Aziz, WIPO Case No. D2011-1829 where the panel brought this case some attention and concluded that the Oki Data test was not fulfilled.
In the present case, the Respondent does not disclose the relationship, or lack thereof, between the Respondent and the Complainant and therefore conveys the false impression that the Respondent is an authorized service center for the Complainant’s products. Additionally, as earlier stated, the website offers services and goods from the Complainant’s competitors.
The Domain Name was registered and is being used in bad faith.
The trademark ELECTROLUX belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
The awareness of the trademark is considered to be significant and substantial. The number of third party domain name registrations, comprising the ELECTROLUX trademark in combination with other words, has skyrocketed the last years. For examples, see WIPO Cases Aktiebolaget Electrolux v. Electrolux International (HK) Co., Ltd., WIPO Case No. D2011-0752; AB Electrolux v. Pablo Rodriguez Guirao, WIPO Case No. D2011-0729; Aktiebolaget Electrolux v. Maksim /SPD CHervinchuk, WIPO Case No. D2011-0403; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,. WIPO Case No. D2011-0388; Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor,. WIPO Case No. D2010-1277; Aktiebolaget Electrolux v. Nomad Marketing, Ltd., WIPO Case No. D2010-1205; Aktiebolaget Electrolux v. Michael Dieckmann, WIPO Case No. D2010-1203; AB Electrolux v. Kelli Cristina Coco Petrucci, WIPO Case No. D2010-0836; Aktiebolaget Electrolux AB v. Sun Qifeng, WIPO Case No. D2010-0633; Aktiebolaget Electrolux v. Sas Adrian, WIPO Case No. D2010-0336; Aktiebolaget Electrolux v. Mehmet Kirci, WIPO Case No. D2010-0305; Aktiebolaget Electrolux v. Domains by Proxy, Inc., DomainsByProxy.com, /My Co Doan, WIPO Case No. D2010-0135; Aktiebolaget Electrolux v. DomainsByProxy.com / My Co Doan, WIPO Case No. D2010-0134; Aktiebolaget Electrolux v. Globaltek International Mexico, SA DE C.V., WIPO Case No. D2009-1472. The considerable value and goodwill of the mark ELECTROLUX is most likely a large contribution to this, and also what made the Respondent register the Domain Name.
The Complainant first tried to contact the Respondent on March 27, 2012 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the ELECTROLUX trademark within the Domain Name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No reply was received. The Complainant sent a reminder on May 9, 2012 and a final reminder on May 11, 2012, however without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file a complaint according to the UDRP process. In earlier disputes, the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
In the current case, the Domain Name is used to attract visitors by including the trademark ELECTROLUX. It is obvious that the Respondent knew of the trademark ELECTROLUX at the time of registration, and therefore the Respondent has entered the registration agreement knowing that they registered a domain name infringing on a third party right. Therefore, the Respondent’s use of the Domain Name is in bad faith. The Domain Name is designed to attract Internet users who are looking for Complainant’s services and cause confusion with the Complainant’s marks and websites. Consequently, the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
In earlier mentioned AB Electrolux v. Ong Nguyen Huu Vinh, WIPO Case No. D2011-0318, where the disputed domain name <suamaygiatelectrolux.com> also was connected to a Vietnamese repair center, the panelist stated; “Again, by registering and using the Domain Name incorporating the Complainant’s widely-known and widely-registered trademark ELECTROLUX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.” Later in the same decision; “Furthermore, the fact that the Domain Name includes the Complainant’s widely-known and widely-registered trademark ELECTROLUX, held and used in commerce by the Complainant in many countries of the world, including Vietnam, where the Respondent resides, for several years prior to the date the Respondent became the registrant of the Domain Name, it is reasonable for the Panel to take the view that the Respondent must have known and been aware of the Complainant’s rights in this trademark at the time the Respondent registered the Domain Name and, as such, this is a further factor supporting a conclusion of bad faith.”
To summarize, there is no doubt that the Respondent was aware of the rights the Complainant has in the trademark ELECTROLUX and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate noncommercial or fair use, without intent for commercial gain, but is misleadingly diverting consumers for his own commercial gain. Consequently, the Respondent must be considered to have registered and be using the Domain Name in bad faith. The Respondent must be well aware of the reputation and recognition of the Complainant’s trademark ELECTROLUX.
The Complainant requests that the Domain Name be transferred to the Complainant.
The Respondent made no reply to the Complainant’s contentions.
6. Discussion and Findings
In order for a panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that
(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.
The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate”.
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
From the evidence of the Complainant’s widespread and longstanding use and registration of the ELECTROLUX mark around the world, the Panel is in no doubt that the ELECTROLUX trademark must qualify as well-known, and with a strong reputation internationally. The Complainant has relevant registered trademark rights, including in Viet Nam, where the Respondent is based. (The Panel notes that, whilst the Complainant provided a listing of its trademark registrations around the world, it only provided two sets of detailed register extracts – for United States of America (“US”) registration no. 908002 and Community Trade Mark registration no. 77925 for ELECTROLUX – both of which were dated from 2009 and so not current at the time the Complaint was filed – the US registration would have been due for renewal since 2009, so this information should have been updated. However, there was sufficient information for the purpose of the Policy for the Panel to verify the details of the – perhaps more pertinent – Vietnamese registrations from the excellent Vietnamese official online database.)
ELECTROLUX is uniquely associated with the Complainant, and the presence of the ELECTROLUX brand will be instantly recognised in the Domain Name <suamaygiatelectrolux.net>, notwithstanding that it is prefixed by the string “suamaygiat”. That this string reportedly means “repair of washing machines” only imports a descriptive reference to a service which is directly relevant to typical ELECTROLUX goods, and does not serve to dispel the inherent association of the Domain Name with the Complainant’s rights in the ELECTROLUX name and mark. The TLD suffix “.net” is of no relevance to the analysis.
The Panel therefore concludes that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has made no claims to any relevant prior rights of its own. Clearly, the Respondent is not itself known by the Domain Name, nor does the Respondent claim to have made any legitimate, noncommercial use of the Domain Name. The Complainant has affirmed that the Respondent is not an authorized user of the ELECTROLUX mark.
The unchallenged evidence provided by the Complainant is that the Domain Name is connected to the website of a white goods repair business called BẢO DƯỠNG VÀ BẢO TRÌ TẠI HÀ NỘI. This is plainly a commercial enterprise. The content of the website is clearly not limited to offerings of “repair of ELECTROLUX washing machines” (to paraphrase the reported meaning of “suamaygiatelectrolux” in the Domain Name, but includes references to different goods and products of other competing goods manufacturers. The Domain Name is effectively being used with the ELECTROLUX name and mark as bait, and the website then offers competing goods and different services. Such use is inherently misleading and certainly inconsistent with the requirements for consideration as bona fide as typically enumerated in the Oki Data Americas, Inc., v ASD, Inc., WIPO Case No. D2001-0903, as referenced above by the Complainant.
In these circumstances, therefore, the Panel accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the Domain Name and the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, there are various examples of the sort of conduct which the Panel shall take (without limitation) as evidence of registration and use in bad faith. The most relevant to the present case is 4(b)(iv):
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel is in no doubt that the Respondent was and is well aware of the Complainant’s rights and reputation, and has simply incorporated the ELECTROLUX name and mark into the Domain Name because of its public familiarity and reputation. The evidence is that it did so without any authorization from the Complainant. It has made no effort to explain or to seek retrospective permission for its action ion response to the Complainant’s initial correspondence or to the present Complaint.
In the Panel’s opinion, the Domain Name has been adopted and used precisely for the purposes exemplified in paragraph 4(b)(iv) of the Policy. There is no suggestion of the existence of any extenuating circumstances.
Accordingly, for the purposes of the Policy, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the condition specified in paragraph 4(a)(iii) of the Policy is also met.
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, <suamaygiatelectrolux.net> be transferred to the Complainant.
Dated: July 13, 2012