WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux (“AB Electrolux”) v. Registrant : Janice Liburd/Moniker Privacy Services
Case No. D2010-2064
1. The Parties
Complainant is Aktiebolaget Electrolux (“AB Electrolux”), Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Registrant : Janice Liburd of Panama and Moniker Privacy Services, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <electroluxmom.com> (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2010. On November 30, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Disputed Domain Name. The Center, inter alia, reminded the Registrar that under Section 188.8.131.52 of the ICANN Registrar Accreditation Agreement the use of privacy registration services may require disclosure of any underlying registrant upon notice of a UDRP dispute. On December 3, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the originally named respondent and contact information in the original Complaint. The Registrar also confirmed that the Disputed Domain Name had been locked by the Registrar. The Center sent an email communication to Complainant on December 3, 2010 providing updated information on the registrant and contact information which had been disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint December 6, 2010 naming the above-refernced entities as Respondent in this matter.
The Center verified that the Complaint together with the amendment to 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 December 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2011.
The Center appointed James H. Grossman as the sole panelist in this matter on January 18, 2011. 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, AB Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Complainant is a world recognized leading producer of appliances and equipment for kitchen and cleaning for both consumers as well as for professional users. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and ovens sold under the Electrolux brand name as well as other names. In 2009 Complainant’s sales were SEK (Swedish Krona) 109 billion and it had 51,000 employees. The trademark ELECTROLUX is registered by Complainant in more than 150 countries around the world including the United States with Registration No. 908002 and in the European Union with Registration No. 77925. This trademark was registered in 1998 which is considerably before the Disputed Domain Name was registered on April 23, 2010. The Disputed Domain Name will expire unless renewed on April 23, 2011. Additionally, Complainant has registered the domain names <electrolux.com> and <electrolux.co.uk>.
Complainant sent a cease and desist letter by email on July 27, 2010 to Respondent requesting a voluntary transfer of the Disputed Domain Name and offered compensation to Respondent for register and transfer fees. Respondent agreed on August 5, 2010 and there followed months of back and forth between the parties at the end of which Complainant finally tired of various excuses for nonperformance and filed this Complaint.
5. Parties’ Contentions
Complainant points out that the dominant part of the Disputed Domain Name <electroluxmom.com> comprises the word Electrolux which is identical to the registered trademark ELECTROLUX, registered on September 16, 1998, which trademark has been registered by Complainant as a trademark and domain names in numerous countries. Complainant also points out that in accordance with certain international agreements relating to intellectual property rights, a well known trademark provides the owner with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services beyond the list of specific products and services. Complainant states that the Disputed Domain Name is confusingly similar to the trademark ELECTROLUX and that the addition of the suffix “mom” is not relevant and has no impact on the overall impression which focuses on the dominant part of the domain name which of course is “Electrolux”. Nevertheless, the term “mom” is connected to Complainant in that it has a contest in cooperation with the well known television series American Idol wherein Complainant sponsors a contest to celebrate amazing moms. Thus, the addition of “mom” only strengthens the impression that the Disputed Domain Names belongs to or is affiliated with Complainant. Complainant further states that it has not found that Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. Complainant advises that it has not given any license or authorization to Respondent to use the trademark.
Further, according to Complainant, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Complainant notes that the Disputed Domain Name is connected to a website which sends the visitor off to other sponsored links. Finally, Complainant states that 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 websites. Respondent, according to Complainant, is not making a legitimate noncommercial or fair use without intent for commercial gain but rather is misleadingly diverting consumers for Respondent’s own commercial gain. Respondent, according to Complainant, registered and is using the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no right or legitimate interests with respect to the Disputed Domain Name; and
iii.. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15 (a)).
A. Identical or Confusingly Similar
A critical factor in determining whether the Disputed Domain Name meets the test of identical or confusingly similar is a comparison between such Disputed Domain Name and the trademark of Complainant so as to determine the likelihood of confusion to an Internet user. The issuance of the trademark ELECTROLUX in 1998 to Complainant passes the threshold test of Complainant having a valid trademark. According to documentation provided by Complainant, the trademark registered in 1998 remains valid until April 1, 2016. This trademark has been registered in some 150 countries. In addition to the trademark identification, Complainant has what appears to hundreds of domain names of all types registered with the name “Electrolux” followed by such additional words as “family club”, “home-comfort”, “professional”, ” at-home” and many more. This plethora of domain names registered by Complainant only adds to the likelihood of confusion created by Respondent with the Disputed Domain Name. The Internet user cannot help but believe that this Domain Name is owned by Complainant whose products are known in most parts of the world.
The addition of the word “mom” presents somewhat of a unique issue. While “mom” is on the one hand a generic term referring to an image of mothers everywhere, at the same time in this case “mom” has a special meaning in that it can be said to relate to the contest sponsored by Complainant in conjunction with the television show American Idol where amazing moms are celebrated by Complainant. Still the Disputed Domain Name cannot reduce the clear understanding of an Internet user that this site is that of Complainant’s and therefore the user expects to rely on the reputation and quality of the Electrolux name. See Lacoste Alligaor S.A. v. China Bizseas, WIPO Case No. D2009-0493, to the effect that a “domain name that wholly incorporates [a] registered trademark establishes confusing similarity.” See also AT&T Corp v. Amjad Kauser, WIPO Case No. D2003-0327.
It seems very likely that Respondent is trying to capitalize on both the recognition of Complainant and also for many the amazing moms contest seen on the American Idol show. With regard to prior decisions where a generic term like “mom” is added to a well recognized trademark, the panel in Vodaphone Group Plc v. Phone-Express, WIPO Case No. D2004-0505, stated that it “accepts the Complainant’s allegations that the addition of a generic term to a trade or service mark is inconsequential and does not prevent a finding of confusing similarity.” See also PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189.
As Complainant points out, the addition of the top-level domain (TLD) “com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore
irrelevant to determine the issue of confusing similarity.
Accordingly, by using “electrolux” as the clearly dominant part of the Domain Name, the Panel agrees with Complainant that Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant’s trademark and image in the marketplace.
The Panel finds that the Disputed Domain Name is identical or confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant states that it has not found that Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. Further, according to Complainant, no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” This has then been re-established in several cases after that case. See Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488; and Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh etc., WIPO Case No. D2003-0494. Further, the use by Respondent of the Disputed Domain Name is obviously commercial (sponsored links are displayed at the website) and not a fair use in that it is intended for commercial gain and seeks to divert Internet users to what they believe to be a site established by Complainant.
While the overall burden of proof rests with Complainant, prior panels have agreed that this could require a complainant to prove a negative, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that respondent lacks rights or a legitimate interests. The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4 (a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name.
C. Registered and Used in Bad Faith
This Panel accepts the argument of Complainant that there is no doubt that Respondent was aware of the rights Complainant has in the trademark ELECTROLUX and the value of said trademark, at the point of the registration of the Disputed Domain Name in April 2010. There is no connection between Respondent and Complainant. The Panel accepts the argument that Respondent knew about the highly publicized “amazing moms” contest referred to above and sought to capitalize on this as well. By using the Disputed Domain Name to display sponsored links, Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting Internet users for its own commercial gain. Respondent is intentionally attempting to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its websites with Complainant’s trademark. Consequently, by taking such actions, this Panel finds that Respondent has both registered and is using the Disputed Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <electroluxmom.com> be transferred to Complainant.
James H. Grossman
Dated: February 1, 2011