WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. xing zhi wei

Case No. D2013-1239

1. The Parties

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

Respondent is xing zhi wei of ruichang, China.

2. The Domain Name and Registrar

The disputed domain name <electrolux-sh.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 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. On July 12, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date. 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 July 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on August 20, 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

Complainant, Aktiebolaget Electrolux, is a company incorporated in Stockholm, Sweden. Complainant is a world leading producer of appliances and equipment for kitchen and cleaning, which was founded in 1901 (Annex 8 to the Complaint), selling more than 40 million products to customers in 150 countries every year including China. In 2010, Complainant had sales of SEK 109 billion and 55,150 employees (Annex 10 to the Complaint).

Complainant has exclusive rights in the ELECTROLUX mark globally. Complainant is the exclusive owner of well-known registered trademarks ELECTROLUX in more than 150 countries, including China (since 1996; Annex 6 to the Complaint). Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these: <electrolux.com> and <electrolux.com.cn > (Annex 7 to the Complaint).

Respondent is xing zhi wei of ruichang, China. The disputed domain name <electrolux-sh.com> was registered on February 25, 2013, long after the ELECTROLUX mark became internationally well-known.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights

- The dominant part of the disputed domain name <electrolux-sh.com> is the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by Complainant as a trademark and domain names in numerous countries all over the world. (Annex 6 to the Complaint).

- The disputed domain name is confusingly similar to the trademark ELECTROLUX. The fame of the trademark has been confirmed in previous UDRP decisions.

- The addition of the suffix “sh” and a hyphen is not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark. The suffix “sh” is an abbreviation of Shanghai, where the company connected to the disputed domain name is located.

- The addition of the top-level domain (tld) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine confusing similarity.

- Anyone who sees the disputed domain name is bound to mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant.

- By using ELECTROLUX as a dominant part of the disputed domain name, Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant’s trademark.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name

- Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization has been given by Complainant to Respondent, to use the trademark.

- Respondent registered the disputed domain name on February 25, 2013. The mere registration of a disputed domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name.

- Respondent has not been using the word “Electrolux” in any other way that would give him any rights in the name, and may not claim any rights established by common usage.

- The disputed domain name is connected to the homepage of a repair centre called Shanghai Electrolux Gas Stove Repair.

- 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 Complainant (Annex 10 to the Complaint).

- Respondent is misleading Internet users to a commercial website. This is not a bona fide offering of goods or services. Respondent is trying to sponge off Complainant’s world famous trademark.

- Respondent does not adequately disclose the relationship, or lack thereof, between Respondent and Complainant and does therefore conveying the false impression that Respondent is an authorized service center for Complainant’s products.

- The trademark ELECTROLUX belonging to Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole community and throughout the world.

- The awareness of the trademark is to be considered, in the whole community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademarks in combination with other words has skyrocketed the last years.

- The considerable value and goodwill of the mark ELECTROLUX, is most likely, a large contribution to this and also what made Respondent register the disputed domain name at issue here.

- Complainant sent Respondent a cease and desist letter on May 10, 2013 (Annex 11 to the Complaint). Despite a reminder sent (on June 10, 2013), no response was ever received. It has been mentioned in earlier disputes that 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.

- In the current case the disputed domain name is used to attract visitors by including the trademark ELECTROLUX. It is obvious that Respondent knew of the trademark ELECTROLUX at the time of registration.

- Complainant has established that Respondent’s use of the disputed domain name is in bad faith. The disputed domain name is designed to attract Internet users who are looking for Complainant’s services and cause confusion with Complainant’s marks and websites.

- 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 Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. (Annex 10 to the Complaint).

- The disputed domain name is currently connected to a website offering services for Electrolux products (Annex 10 to the Complaint). 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 Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

- There is no disclaimer or other information stating the non-existing relationship between the disputed domain name and Complainant. Respondent displays Complainant’s trademark protected logotype at the top of the website, without any authorization. This may further confuse a visitor.

- Whether or not Respondent is the one getting revenue from the products being sold at the website is irrelevant for the finding of bad faith in this case.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) Complainant has sent the cease and desist letter in English, and Respondent has never taken the trouble to answer, neither to reply to the issues raised in the letter, nor to state that he does not understand the content.

(b) If he had not understood the content of the cease and desist letter, the natural thing would have been to send a short email stating that he did not understand the content of the letter. Respondent has just ignored all attempts to solve this issue amicably.

(c) If a registrant did not understand and were in good faith he would reply to any of the communication asking for clarification.

(d) It would be cumbersome and to Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Sweden, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the website at the disputed domain name includes Latin characters “electrolux” and “sh” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds adequate grounds in the present proceeding to accept Complainant’s request and to proceed in English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <electrolux-sh.com> is registered in Latin characters, rather than Chinese script; (b) Complainant has sent the cease and desist letter in English, and Respondent has never answered, neither to reply to the issues raised in the letter, nor to state that he does not understand the content; (c) the website at the disputed domain name is a mainly Chinese-based website, but the webpages do contain some English words, such as “thinking of you” (which is next to ELECTROLUX logo) , “Home”, “About Us” and so forth in the website directory structure (Annex 10 to the Complaint); (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceedings is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ELECTROLUX mark acquired through registration. The ELECTROLUX mark has been registered worldwide including in China, and Complainant has a widespread reputation as a world leading producer of appliances and equipment for kitchen and cleaning (Annex 8 to the Complaint), selling on the order of 40 million products to customers in 150 countries every year.

The disputed domain name <electrolux-sh.com> comprises the ELECTROLUX mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the suffix “sh” and a hyphen to the mark ELECTROLUX. This does not eliminate the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the term “sh” and a hyphen to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. The suffix “sh” is an abbreviation of Shanghai, where the company connected to the disputed domain name is located. Internet users who visit “www.electrolux-sh.com” are likely to be confused and may falsely believe that “wwwelectrolux-sh.com” is an online shop operated by Complainant for selling ELECTROLUX-branded products in Shanghai. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the ELECTROLUX mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein).

Complainant is the exclusive owner of famous and/or well-known registered trademark ELECTROLUX in more than 150 countries, including China (since 1996; Annex 6 to the Complaint), which long precedes Respondent’s registration of the disputed domain name (February 25, 2013).

According to Complainant, Complainant is a world leading producer of appliances and equipment for kitchen and cleaning (Annex 8 to the Compliant), selling more than 40 million products to customers in 150 countries every year. In 2010, Complainant had sales of SEK 109 billion and 55,150 employees.

Moreover, Respondent is not an authorized dealer of ELECTROLUX-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “electrolux” in his business operation or the use of the ELECTROLUX mark and design on his website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ELECTROLUX trademark or to apply for or use any domain name incorporating the ELECTROLUX mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <electrolux-sh.com> on February 25, 2013. The disputed domain name is identical or confusingly similar to Complainant’s ELECTROLUX trademark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, the disputed domain name <electrolux-sh.com>is connected to the homepage of a repair centre called Shanghai Electrolux Gas Stove Repair, which appears to be an official service centre endorsed or sponsored by Complainant, contrary to the fact (Annex 10 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name in light of the Complainant’s prima facie case. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ELECTROLUX mark with regard to its products. Complainant has registered its ELECTROLUX mark internationally, including registration in China (since 1996). Moreover, Respondent’s homepage (resolved by the disputed domain name) appears to be an official service centre endorsed or sponsored by Complainant, contrary to the fact (Annex 10 to the Complaint). Respondent would likely not have advertised itself on his homepage as a repair centre called Shanghai Electrolux Gas Stove Repair if he was unaware of Complainant’s reputation.

In the other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the ELECTROLUX mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s ELECTROLUX-branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s ELECTROLUX-branded services (post-sale repair services) without authorization. Complainant claimed that Respondent is using the disputed domain name to intentionally attempt to attract, for “commercial gain”, Internet users to the websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the ELECTROLUX mark (as well as the content on the website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annexes 9 and 10 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the ELECTROLUX mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are likely led to believe that the website at <electrolux-sh.com> is either Complainant’s site or the site of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <electrolux-sh.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: September 9, 2013