WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Electrolux Home Products, Inc. v. Fabian Medina, Servicios Multimarcas-1124024133

Case No. DCO2020-0027

1. The Parties

The Complainant is Electrolux Home Products, Inc., United States of America (“United States”), self-represented.

The Respondent is Fabian Medina, Servicios Multimarcas-1124024133, Colombia.

2. The Domain Name and Registrar

The disputed domain name <frigidaire.com.co> is registered with Central Comercializadora de Internet S.A.S (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2020, the Registrar 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 May 19, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined to amend the Complaint on May 22, 2020. The Center sent an email communication to the parties in English and Spanish on May 19, 2020 regarding the language of the proceeding. The Respondent replied in Spanish on the same day without addressing the language of the proceeding. The Complainant replied in English on May 25, 2020, filing a supplement and amendment to the Complaint in which it declined to amend the identification of the Respondent and requested that English be the language of the proceeding.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2020. The Respondent sent email communications on the same day and again on June 18, 2020. In accordance with the Rules, paragraph 5, the due date for a Response was June 23, 2020. The Respondent did not submit a formal response. Accordingly, the Center notified the Commencement of the Panel Appointment on July 2, 2020. The Respondent sent another email communication on the same day. The Complainant submitted a supplemental filing on July 7, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on July 10, 2020. 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

Electrolux, founded in 1919, manufactures household and professional appliances, including refrigerators, dishwashers, washing machines and cookers. The Complainant owns multiple trademark registrations in multiple jurisdictions, including United States trademark registration number 616,196 for FRIGIDAIRE, registered on November 15, 1955 and specifying goods in class 11; and Colombian trademark registration number 526335 for a FRIGIDAIRE word and device mark, registered on October 28, 2015 and specifying goods in class 21. Those trademark registrations remain current. The Complainant’s parent company has also registered multiple domain names, including <frigidaire.com>, which it uses in connection with an online store.

The Respondent is an individual in Colombia whose name can be translated as “Fabian Medina, Multi-brand Services-1124024133”.

The disputed domain name was registered on October 24, 2017. It resolves to a website in Spanish with the header “Frigidaire Colombia – Sitio Oficial” (translation: Frigidaire Colombia – Official Site). The website prominently displays the Complainant’s FRIGIDAIRE word and device mark, photographs of the Complainant’s FRIGIDAIRE appliances, a linked page offering technical services and a “Tienda” (Store) icon. A notice at the bottom of each page describes the site as “Nuestro sitio web certificado FRIGIDAIRE” (Our certified FRIGIDAIRE website) that offers service, parts, sales and accessories. The contact details are in Bogotá. When Internet users click on the Store icon, they are redirected to a webpage offering for sale a FRIGIDAIRE washing machine on the website of a Colombian hypermarket chain.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s FRIGIDAIRE mark. The first and dominant element of the disputed domain name incorporates the FRIGIDAIRE mark in its entirety.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not received any license or consent, express or implied, to use the FRIGIDAIRE marks in a domain name or in any other manner from the Complainant. The Respondent is not commonly known in reference to Frigidaire. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is used by the Respondent in an attempt to pass itself off as the Complainant.

The disputed domain name was registered and is being used in bad faith. It may be inferred from the circumstances that the Respondent has deliberately attempted to deceive visitors to the website by portraying itself as associated with the Complainant, when in fact the main function of the website is to redirect Internet users to the Respondent’s website. It may further be inferred that the Respondent’s purpose in purchasing the disputed domain name was to gain business by portraying itself as associated with the Complainant.

B. Respondent

The Respondent submits that he is the legitimate owner of the disputed domain name and he is not committing a crime. He is interested in an agreement and prepared to transfer the disputed domain name if he is paid USD 10,000, but there is no way to deprive him of ownership. He reiterates that he is the legitimate owner and that the Complainant has to understand this according to the laws governing the Internet.

When a lock was applied to the disputed domain name, the Respondent submitted that he acquired the disputed domain name legitimately and (i) he is not passing off any trademark; (ii) the FRIGIDAIRE trademark is not related to the Complainant; and (iii) he requests detailed explanations or he would be forced to sue. After the appointment of the Panel, the Respondent noted with concern that the proceeding was moving forward. He submits that the disputed domain name is his legitimate property and he will not allow it to be transferred as this would be irrational and arbitrary. The entity that filed the Complaint does not represent the trademark at all.

6. Discussion and Findings

6.1 Procedural Issues

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Spanish.

The Complainant requests that English be the language of the proceeding. Its main arguments are that the Respondent is competent in English, as evidenced by the fact that the disputed domain name is composed of English language letters, the website to which the disputed domain name resolves contains some English content; and the website links to the Complainant’s social media pages in English; and requiring the translation of the Complaint into Spanish would cause significant delay and cost to the Complainant.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint was filed in English and the Respondent sent his informal email communications in Spanish. Despite receiving communications from the Center in English and Spanish, including as regards the language of the proceeding, the Respondent did not choose to comment on the issue of language. Rather, the Respondent has chosen to participate in this proceeding via a series of informal communications in which he has presented his views on the Complaint and each of the elements of paragraph 4(a) of the Policy. He has never requested translation of the Complaint into Spanish. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Spanish would create an undue burden and delay, whereas accepting all documents as filed in English or Spanish will not cause unfairness to either party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents as filed in their original language, whether in English or Spanish, without a translation.

B. Supplemental Filing

The Complainant made a supplemental filing on July 7, 2020, prior to the appointment of the Panel. It makes this filing as “additional support” of its position. The Respondent did not comment on the supplemental filing.

Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) of the Rules require the Panel to ensure that “each Party is given a fair opportunity to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the Policy is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Accordingly, the Panel will only permit the supplemental filing in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the Complaint.

The Panel observes that the supplemental filing in this proceeding consists of a copy of a criminal complaint dated June 26, 2020 filed with the Colombian Fiscalía General de la Nación (Office of the Attorney-General) by the Complainant against the Respondent regarding the disputed domain name. This evidence post-dates the filing of the Complaint on May 13, 2020 and therefore constitutes new evidence. Due to this exceptional circumstance, the Panel accepts the Complainant’s supplemental filing as part of the record of this proceeding without prejudice to the determination of its relevance, materiality and weight.

C. Concurrent Legal Proceeding

Paragraph 18(b) of the Rules requires a Party to promptly notify the Panel and the Center in the event that it initiates any legal proceedings during the pendency of this proceeding. The Complainant’s supplemental filing notifies the Panel and the Center that it has filed a criminal complaint against the Respondent. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a proceeding where the disputed domain name is also the subject of other pending legal proceedings. The Respondent does not request that the panel exercise any such discretion and the Panel sees no reason to do so, in particular, due to the potential for indeterminate delay. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.14.1.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:

(i) the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the FRIGIDAIRE mark. The Respondent provides no evidence in support of its assertion that the FRIGIDAIRE trademark is not related to the Complainant.

The disputed domain name wholly incorporates the FRIGIDAIRE mark as its initial and only distinctive element.

The disputed domain name also contains a Secondary Level Domain suffix (i.e., “.com.co”). This element can be disregarded in the comparison between a domain name and a trademark unless it has some impact beyond its technical function, which is not the case here. See WhatsApp, Inc. v. F. Nunley Kathie, Kathie F. Nunley, WIPO Case No. DCO2017-0027.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, the operative element of the disputed domain name is identical to the Complainant’s FRIGIDAIRE trademark. The website to which the disputed domain name resolves is presented as an official website of Frigidaire Colombia, promoting Frigidaire products and offering service, parts, sales and accessories. However, the Complainant submits that the Respondent has not received any license or consent, express or implied, to use the FRIGIDAIRE mark in a domain name or in any other manner from the Complainant. The website also redirects to a hypermarket website that offers for sale one of the Complainant’s products and a wide range of other goods. In view of all these circumstances, the Panel does not consider this to be a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

As regards the second circumstance, the Registrar’s verification email indicates that the Respondent’s name is “Fabian Medina, Servicios Multimarcas-1124024133”, not “Frigidaire”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a commercial website that redirects to another commercial website. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, he asserts that he lawfully acquired the disputed domain name. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134. Accordingly, the Panel finds that the Respondent did not rebut the Complainant’s prima facie case. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first and fourth circumstances are as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name;

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site or location or of a product or service on [the Respondent’s] web site or location.”

As regards registration, the disputed domain name was registered in 2017, years after the Complainant acquired its trademark rights in FRIGIDAIRE. The operative element of the disputed domain name is identical to the FRIGIDAIRE trademark. The website to which the disputed domain name resolves prominently displays the Complainant’s FRIGIDAIRE word and device mark together with images of the Complainant’s products. It falsely claims to be an official or certified FRIGIDAIRE website. This all gives the Panel reason to find that the Respondent was aware of the FRIGIDAIRE trademark at the time that he registered the disputed domain name.

As regards use, the disputed domain name resolves to a website that is falsely presented as an official or certified Frigidaire website that offers service, parts, sales and accessories for the Complainant’s products. The website also redirects to a hypermarket website that offers for sale one of the Complainant’s products and a wide range of other goods. In view of these circumstances and those set out in Section 6.2 B above, the Panel finds that the disputed domain name is used to attract Internet users by creating a likelihood of confusion with the Complainant’s FRIGIDAIRE trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. This use is intentional and for the commercial gain of the Respondent and the operator of the linked website. The Respondent provides no arguments or evidence in support of his assertion that he is not passing off any trademark. Accordingly, the Panel finds that these circumstances fall within the terms of paragraph 4(b)(iv) of the Policy.

Further, the Respondent indicated during this proceeding that he was prepared to transfer the disputed domain name if he was paid USD 10,000. In the circumstances, the Panel considers this offer also indicative of bad faith within the terms of paragraph 4(b)(i) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 name <frigidaire.com.co> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: July 20, 2020