WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. I GEDE ARYA KUSUMA
Case No. D2012-1862
1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is I GEDE ARYA KUSUMA of Tabanan, Bali, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <electrolux-vacuum.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2012. On September 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2012, the Registrar 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 Respondent of the Complaint, and the proceedings commenced on September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 16, 2012.
The Center appointed Timothy D. Casey as the sole panelist in this matter on November 7, 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 Domain Name was registered by Respondent on April 11, 2012. Complainant has numerous registered trademarks in many countries (Annex 6 to the Complaint), including in Indonesia where Respondent resides, for the trademark ELECTROLUX (the “Trademark”) or that include the Trademark as part of the mark, that have been in use many years prior to Respondent’s registration of the Domain Name. In addition, Complainant was found in 1901 and registered as a Swedish company in 1919 as Aktiebolaget Electrolux.
5. Parties’ Contentions
Complainant contends it is a global leader in home appliances and appliances for professional use, selling more than 40 million products, including vacuum cleaners, to customers in 150 countries every year. Complainant had sales of SEK 109 billion and 55,150 employees in 2010 and has used the Trademark extensively in more than 150 countries on its products and services for many years, allegedly acquiring the status of a well-known trademark in the areas of appliances and equipment for kitchen, cleaning and outdoor products. Complainant also has almost 700 gTLDs and ccTLDs worldwide. Accordingly, Complaint contends that Respondent could not have been unaware of the Trademark at the time of registration of the Domain Name and thereafter.
Complainant contends the Domain Name is identical to the Trademark because it comprises the word “electrolux”. Complaint further contends the Domain Name is confusingly similar to the Trademark because it includes the word “electrolux” and the suffix “-vacuum” does not change the overall impression of the Domain Name and describes one of Complainant’s product categories. Further, Complainant contends that the addition of the top-level domain has no impact on the overall impression of the Domain Name and is irrelevant when considering confusing similarity. Complainant further contends that the trade public will mistake the Domain Name as being associated with Complainant.
Complainant has found no evidence that Respondent has any trademarks or trade name corresponding to the Domain Name or that Respondent has been using the Trademark in any other way that would give Respondent any legitimate rights in the Domain Name. Complainant states that Respondent has not been licensed or authorized to use the Trademark.
Complainant contends the Domain Name is connected to commercial websites linking to Amazon.com, where Complainant’s and Complainant’s competitors’ products are offered for sale, which causes traffic to flow to Respondent’s commercial website and leads to confusion on the part of consumers seeking information about Complainant and Complainant’s products. Complainant contends this is not a bona fide offering of goods or services. Finally, Complainant contends that Respondent does not fall within the safe harbors of paragraphs 4(c)(i) and 4(c)(ii) of the UDRP and through the use of certain copyright notice text on its website purposely creates a false impression that Respondent is an authorized reseller of Complainant’s products.
Complainant contends that the status and existence of its Trademark throughout the world has created significant and substantial awareness of its Trademark and such awareness led Respondent to register the Domain Name. Complainant made a number of attempts to contact Respondent in order to get Respondent to cease and desist from continued use of the Domain Name and to transfer the Domain Name to Complainant, but Respondent has not replied to those attempts. Complainant contends that even though Respondent’s website does not offer for sale products related to Complainant, Respondent’s website is linked to other websites that do sell such products and that Respondent profits from providing such click-through advertising. Complainant also contends that it is irrelevant as to whether Respondent has selected the click-through links or actually profits from such links because the “for commercial gain” requirement of paragraph 4(b)(iv) of the UDRP does not specify that Respondent must be the one to derive benefit from Respondent’s activities as long as someone does derive such benefits.
Complainant requests the Domain Name be transferred to Complainant.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Although Complainant contends that the Domain Name is identical to the Trademark, this contention is without merit. Identical means identical and while the Domain Name includes the Trademark, the Domain Name includes additional text, aside from the top-level domain, that prevents Domain Name from being considered identical to the Trademark.
Nevertheless, the Domain Name could be confusingly similar to the Trademark. The threshold test for confusing similarity under the UDRP involves a comparison between the Trademark and the Domain Name to determine the likelihood of confusion between the Domain Name and the Trademark. In order to satisfy this test, the Trademark must usually be recognizable as such within the Domain Name. Here, the ELECTROLUX Trademark is prominently featured at the beginning of the Domain Name <electrolux-vacuum.net>.
The addition of common, dictionary, descriptive, or negative terms to a disputed domain name are typically regarded as insufficient to prevent confusion and may actually serve to enhance a likelihood of confusion. Here, the addition of the hyphen and the word “vacuum” to the Domain Name does nothing to prevent confusion regarding Complainant’s ownership, sponsorship, or approval of the Domain Name and likely enhances such confusion. Complainant’s Trademark includes the term ELECTROLUX and the addition of the term “-vacuum” to the Domain Name simply serves to further describe one of many products offered by Complainant under the Trademark. Likewise, the addition of the top-level domain “.net” does nothing to change the overall appearance of the Domain Name or its confusing similarity with the Trademark. A consumer viewing the Domain Name and the website associated with the Domain Name would be likely to be confused as to the true ownership, sponsorship or approval of the Domain Name and website.
The Panel finds the Domain Name to be confusingly similar to the Trademark, and that the first element of the UDRP has been met by Complainant.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, and that it did not in any way authorize Respondent’s use of the Trademark. Respondent did not reply to Complainant’s contentions. The Panel accepts such contentions as true.
The Panel finds that Respondent’s use of the Domain Name was not authorized by Complainant and that based on the case record, Respondent has no rights or legitimate interests in the Domain Name. The second element of the UDRP has been met by Complainant.
C. Registered and Used in Bad Faith
Complainant has provided ample evidence to support the contention that Respondent must have been aware of the Trademark prior to registering the Domain Name and that the Domain Name was registered to create an association with the Trademark and Complainant, which may constitute bad faith. Complainant’s almost 700 domain names must have created some difficulty for Respondent in selecting a domain name that was not already registered by Complainant, which likely explains the addition of the term “-vacuum” to the Domain Name and the selection of the “.net” top-level domain.
Complainant has also provided sufficient evidence supporting Complainant’s contention that Respondent’s website, as used in association with the Domain Name, has directed traffic to websites that sell Complainant’s products as well as the products of others. The Panel agrees with Complainant’s contention that it matters not whether Respondent profits directly from the sales by these other sites, profits from click-through traffic, or even selects the links that result in such activity, as long as someone is benefiting from these activities, which appears to be the case.
The Panel must look to the cumulative weight of the evidence to determine if the Domain Name has been registered and used in bad faith. Awareness of Complainant’s Trademark prior to registration is one factor of many to be considered, although in this case such awareness hurts rather than helps Respondent’s case. Viewed in the light most favorable to Respondent, awareness of the marks shows that Respondent had notice that the Domain Name might be confusingly similar to the Trademark, but nevertheless chose to register and use the Domain Name.
Use of the Domain Name to divert Internet users to another online location may also be indicative of bad faith. As a result of Respondent’s failure to reply to the Complaint, the Panel is compelled to rely upon Complainant’s contention that the Domain Name has been used to link websites targeting the sale of Complainant’s products and products that complete with Complainant’s product, including the same products with which the Trademark is used, thereby creating additional likelihood of confusion with Complainant’s Trademark. Had Respondent used the Domain Name in a completely unrelated fashion, there might be some basis for finding otherwise, but in view of the above factors, the Panel finds that Respondent registered and used the Domain Name in bad faith. The Panel finds the third element of the UDRP has been met by Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the Domain Name <electrolux-vacuum.net> to be transferred to the Complainant.
Timothy D. Casey
Date: November 21, 2012