WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Sawang Yaisang

Case No. D2013-0119

1. The Parties

The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Sawang Yaisang of Bangkok, Thailand.

2. The Domain Names and Registrar

The disputed domain names <electroluxdishwasherreviews.info>, <electroluxdishwashersale.info>, <electroluxwasheranddryersale.info> are registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 18, 2013, 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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2013.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 21, 2013. 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 is a producer of household, kitchen and cleaning appliances. It markets its products under the trademark ELECTROLUX and has numerous registered trademarks for the mark. The Complainant bases the present dispute on its registered trademarks for word and device marks of ELECTROLUX. Its trademark registration numbers for ELECTROLUX in Thailand, the country where the Respondent resides are TM 9463 and TM 9464.

The Complainant states that it owns about seven hundred domain names that contain its trademark ELECTROLUX under various gTLDs and ccTLDs and has provided a list of these domain names, including <electrolux.com>, <electrolux.net> and <electrolux.info>. The Respondent registered the disputed domain names <electroluxdishwasherreviews.info>, <electroluxdishwashersale.info> and <electroluxwasheranddryersale.info> on October 3, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is a Swedish joint stock company founded in the year 1901 and was registered as a company in 1919. The Complainant asserts that its trademark ELECTROLUX is distinctive and enjoys a good reputation and international recognition due to its extensive use and investments in developing the mark. A list of its registered marks and copies of its trademark registration in the United States of America are filed with the Complaint. The Complainant further states it is a leader in home appliances and appliances for professional use and that its mark has wide community awareness. The Complainant indicates that it markets forty million products in about one hundred and fifty countries per year and its sales in 2010 were SEK 109 billion and it employs about 55,150 people. The Complainant further contends its mark has the stature of a well-known mark under Article 6 biz of the Paris Convention for protection of Industrial Property and under Articles 16.2 and 16.3 of the TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement, and thereby has the right to prevent the use of its mark for any products or services.

The Complainant states that the disputed domain names are confusingly similar to its ELECTROLUX trademark, which has inherent and acquired distinctiveness and refers to previous UDRP cases that have recognized the fame of the ELECTROLUX mark. The Complainant further argues that the additional words “washer”, “dryer”, “sale” and “review” do not lessen the confusing similarity with its mark, as the mark is associated with Complainant and is the dominant feature of the disputed domain names. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent is not commonly known by the disputed domain names and has no trade name or trademark corresponding to the disputed domain names. Further, the Complainant has not given any authorization to the Respondent to use its mark and the Respondent is not a re-seller of the Complainant to qualify for the safe harbor provisions under paragraph 4(c) of the Policy or the criteria laid down for re-sellers in Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903.

The Complainant contends the disputed domain names have been registered and are being used in bad faith for the reasons that the Complainant’s mark is well known and widely used internationally and the Respondent ought to have known of the Complainant’s rights in the mark at the time of registration of the disputed domain names. The fact that the Respondent did not respond to the cease and desist letters sent by the Complainant is relevant in the finding bad faith asserts the Complainant. The Complainant further states that the disputed domain names are connected to websites that have links to the website “www.amazon.com”, whereby the Respondent or other third parties are likely to earn wrongful revenue by misleading Internet users looking for the Complainant online. The Complainant therefore requests for the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove each of these three elements in order to succeed in these proceedings:

(i) The disputed domain names are 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 disputed domain names; and

(iii) The disputed domain names were registered and are being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first requirement of paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights.

The disputed domain names contain the Complainant’s ELECTROLUX mark in its entirety along with the words: “dish washer reviews”, “dish washer sale” and “washer and dryer sale”. The Complainant has argued that confusing similarity can be found if the trademark constitutes the dominant feature of the domain name irrespective of the other words used with the trademark. In the present case the Panel finds that the Complainant’s mark is a dominant component in all the disputed domain names not only due to the distinctiveness of the ELECTROLUX mark, but also due to the choice of words used with the trademark. The words “dish washer” and “washer dryer” used in the disputed domain names, have particular relevance to the Complainant’s trademark, as these are products being offered under the Complainant’s trademark. It is obvious that although the words are generic, it has been used with a specific purpose, and that purpose is to target the trademark. Such targeted use of generic words with the trademark, which has been observed in several previous UDRP cases, adds to the confusing similarity of the disputed domain names with the Complainant’s mark. See for instance Viacom International Inc. v. Frank. F.J ackson and Nancy Miller, WIPO Case No. D2003-0755. (Where it was found that use of a generic term that has specific relevance to the trademark in question, does not serve to distinguish the domain name from the trademark, but may reinforce the association of the domain name with the complainant’s trademark).

The other generic words used in the disputed domain names, such as “reviews” and “sale” also do not dispel the confusing similarity with the mark. These generic words are non distinctive and the addition of these words do not impede a finding of confusing similarity with the trademark, as the trademark is the dominant feature of the disputed domain names. See for instance Lego Juris A/S v. Gloria Wilson, WIPO Case No. D2012-2444. (Where the domain name <legoreview.info> was found confusingly similar to the LEGO trademark; and it was held that neither the addition of the word “review” nor the addition of the gTLD “.info”, interfered with a finding of confusing similarity with the mark). Also see Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 for a discussion regarding the use of another’s mark in its entirety with descriptive and non distinctive words, and the finding that such additional words do not alter the fact that the domain name is confusingly similar to the mark.

The Complainant has submitted sufficient evidence in the proceedings that demonstrates it has well-established rights in the ELECTROLUX mark. It has provided a list of over one thousand three hundred international trademark registrations for the ELETROLUX mark and copies of some of its trademark registrations that establishes its mark has been used in several jurisdictions for a considerable time. The Panel also notes that the Complainant’s rights in the mark have been recognized in other previous UDRP cases, AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 and AB Electrolux v. Ong Bui Trung Kien, WIPO Case No. D2012-1091. For the reasons discussed the disputed domain names are found confusingly similar to the trademark ELECTROLUX in which the Complainant has rights.

The Complainant has successfully established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a case that the Respondent lacks rights or legitimate interests in the disputed domain names. The submissions made by the Complainant that the Respondent lacks rights in the disputed domain names are that the Respondent is not known by the disputed domain names and has no trade name or trademark corresponding to the disputed domain names. The Complainant has also asserted that no permission or authorization has been granted to the Respondent to use its mark.

The other noteworthy argument extended by the Complainant is that the Respondent is not covered under the Oki Data principles (In the case Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001- 0903 certain criteria for the use of a trademark by domain name registrants who are likely to be legitimate re-sellers of the complainant’s products were enunciated). The Panel finds the disputed domain names are linked to websites that are used for posting various third party advertisements. The websites also provide links to redirect Internet users to sites such as “www.amazon.com” that offers myriads of goods and products including products of the Complainant. Such use is not considered legitimate use of the disputed domain names. See Lego Juris A/S v. Guo Rong, WIPO Case No. D2012-0953. The use of the Complainant’s mark in the disputed domain names to redirect Internet users to third party sites, and in particular sites such as “www.amazom.com” rules out the possibility of the Respondent being a legitimate re-seller of the Complainant’s products. See Lego Juris A/S v. Guo Rong, supra, citing Lego Juris v, Andrew Vierling, WIPO Case No. D2010-1913, where it was discussed that such a respondent could at best be described as an intermediary or a middle man, profiteering from the unauthorized use of the complainant’s trademark in a domain name to redirect Internet users to a location where the complainant’s products may be purchased.

As argued by the Complainant, the Oki Data factors may apply equally to an authorized re-seller as to an unauthorized re-seller of a complainant’s products. The key aspect under the Oki Data factors requires the Respondent to use the disputed domain name for legitimate purposes and only sell the trademarked goods; otherwise it would be viewed as “bait and switch” operation. However in the present case the Respondent’s websites are not selling the Complainant’s products, but only facilitate the redirection of Internet users to other sites that sell many products, some of which may be the Complainant’s products. Therefore the fundamental requirements under the Oki Data principles are not met here, first, because the Respondent does not directly offer the Complainant’s goods, second, the Respondent does not use the disputed domain names only for the sale of the trademarked goods, third, the Respondent does not accurately disclose the Respondent’s relationship with the trademark owner and most importantly the disputed domain names are not being used for any legitimate activity. The Respondent therefore is not an unauthorized re-seller of the Complainant’s products under the Oki Data principles but a more apt description of the Respondent’s activities under the circumstances is “an unauthorized user of the Complainant’s trademark” as observed in Lego Juris v, Andrew Vierling, supra.

The Panel further notes that there is no indication from the given material that the disputed domain names are being used in a manner that could be considered non-commercial fair use, but as discussed, the disputed domain names are being used to redirect unsuspecting Internet users looking for the Complainant or information related to the Complainant’s products. Given this background, by merely placing the words “Electrolux Dish Washer Reviews” at the bottom of the websites, in the Panel’s view, cannot be considered a disclaimer. As the websites connected to the disputes domain names function as a link farm that redirects Internet traffic to other third party sites, the Panel finds there is no bona fide use of the disputed domain names by the Respondent.

The Respondent has not attempted to refute the Complainant’s submissions by filing a response in these proceedings. In the absence of a rebuttal from the Respondent the Panel finds that the Complainant has established a prima facie case.

The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy, that the Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain names were registered in bad faith and are being used in bad faith.

It has been clearly established in these proceedings that the ELECTROLUX trademark is distinctive and is associated with the Complainant who has adopted and used it for a number of years. The Respondent has registered the disputed domain names using the trademark with a set of descriptive words specific to the Complainant’s products sold under the trademark. It is highly unlikely that the Respondent was not aware of the pre-existing rights of the Complainant’s mark when registering the disputed domain names. Given these circumstances, the Panel has no hesitation in finding the disputed domain names have been registered in bad faith with knowledge of the Complainant’s rights in the ELECTROLUX trademark.

The screen shots of the Respondent’s websites filed as evidence, show the web pages linked to the disputed domain names have several sponsored advertisements to unrelated third party sites offering goods and services. One such site is “www.amazon.com”. Redirecting Internet users to others websites, particularly “www.amazon.com” has been found to be bad faith use in previous UDRP cases under similar circumstances, as the domain name seeks to cash in on the trademark of another to attract Internet users. See Lego Juris A/s v. David Hudson, WIPO Case No. D2012-0060. (Where domain names that were confusingly similar to the LEGO trademark and were being used for redirecting Internet traffic to third party sites such as “www.amazon.com”, it was held to be bad faith use of the domain names).

The Panel notes that the Complainant’s attempts to contact the Respondent were of no avail, as the Respondent did not reply to the communications sent by the Complainant dated January 4, 2013 or to a reminder sent on January 8, 2013 requesting for a voluntary transfer of the disputed domain names. While neglecting to reply to cease and desist notices or communications sent by the Complainant, in and of itself does not indicate bad faith, given the overall circumstances of the case, the failure on the part of the Respondent to reply, does lead to adverse inference about the Respondent.

The Panel finds from all the facts and the circumstances of this case, that the disputed domain names were registered by the Respondent with an intention to make commercial gains from the goodwill associated with the Complainant’s mark and to attract Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s well known mark and with the intent of deriving some mileage from the trademark ELECTROLUX. Paragraph 4(b)(iv) makes reference to circumstances indicating bad faith registration and use of the domain name, if such registration and use is made with an intention to attract, for commercial gain, Internet users to the website or other online 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. For the reasons discussed, the Panel finds that the disputed domain names have been registered in bad faith and are being used in bad faith as envisaged under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain names in bad faith and is using the disputed domain names in bad faith.

7. Decision

The Complainant has established that: (i) the disputed domain names are confusingly similar to a trademark in which it has rights and (ii) the Respondent lacks rights or legitimate interests in the disputed domain names and (iii) the disputed domain names were registered and are being used being used in bad faith. The Complainant has thereby fulfilled the requirements under the Policy to succeed in these proceedings.

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <electroluxdishwasherreviews.info>, <electroluxdishwashersale.info> and <electroluxwasheranddryersale.info> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: March 7, 2013