WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Marilyn Berkowitz
Case No. D2012-2233
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Marilyn Berkowitz of Houston, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <vacuumvacuumcleanerselectrolux.com> and <vacuumvacuumcleanerselectrolux.mobi> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2012. On November 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 13, 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 for the disputed domain names.
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 November 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2012.
The Center appointed Ana María Pacón as the sole panelist in this matter on December 21, 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.
The language of the proceeding is English, as per paragraph 11(a) of the Rules..
4. Factual Background
The Complainant is a Swedish company founded in 1901. It is a market leader in home appliances and appliances for professional use with operation in more than 100 countries. Complainant products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers distinguished – among others - with the trademark ELECTROLUX.
The Complainant has several trademark registrations for the trademark ELECTROLUX. As an example, reference is made to international registration No. 836605 and to the US registrations No. 2976482, 3066400, 933368, 284377, 995587, 248774, 2747782, 2808980, 195691, 1617477, 562427, 2822948. These trademarks have been also registered as domain names in the “.com”, “.info”, “.org” and “.net” TLDs.
According to a printout of the WhoIs database the disputed domain names were registered on April 23, 2012.
5. Parties’ Contentions
The Complainant contends the following:
- The disputed domain names comprise the word “electrolux”, which is identical to the registered trademark ELECTROLUX. The name “Electrolux” has been registered by the Complainant as a trademark and domain name in several countries all over the world.
- The disputed domain names are confusingly similar to the trademark ELECTROLUX. The addition of the prefix “vacuumvacuumcleaners” is not relevant and will not have any impact on the overall impression of the dominant part of the name, “Electrolux”. Instead, the suffixes describe one of the Complainant’s product categories (vacuums) and strengthen the impression that the disputed domain names are in some way connected to the Complainant. Also the addition of the gTLDs “.mobi” and “.com” do not have any impact on the overall impression of the dominant portion of the disputed domain names.
- ELECTROLUX is a well-known trademark. This has been confirmed in different UDRP decisions.
- The Respondent doesn’t have any registered trademarks or trade names corresponding to the disputed domain names. No license or authorization of any other kind has been given by the Complainant to the Respondent, to use its trademark.
- The registration of the disputed domain names are several decades after the world wide trademark registrations of the mark ELECTROLUX. In addition, the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of a domain name.
- The disputed domain names are connected to commercial websites linking to “www.amazon.com” where the Complainant’s as well as its competitors’ products are offered. Thus, the Respondent has intentionally chosen domain names based on a registered trademark in order to generate traffic to its own commercial websites.
- The Complainant tried to contact the Respondent on October 30, 2012 through a cease and desist letter. The Complainant requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees. No reply was received.
- Due the well-known and reputation of the trademark ELECTROLUX there is no doubt that the Respondent must be aware of it before registering the disputed domain names.
- The disputed domain names redirect to “www.amazon.com”. The redirection to other websites do not necessarily show that the Respondent is using the domain names in bad faith, but where the use is extended to a domain name which is confusingly similar to the Complainant’s trademark, such use will constitute bad use when it is made to intentionally attempt, for commercial gain, to divert Internet traffic to its website. It is also without relevance whether or not the Respondent is actually getting revenue from the pages itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the domain name registered by the Respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A Complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.
The Complainant has provided sufficient evidence of its rights in the trademark ELECTROLUX in several countries worldwide.
The relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common terms typically being regarded as insufficient to present threshold Internet user confusion. This will particularly be the case where the trademark is inherently distinctive and widely-known. (Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694).
In the present case, the disputed domain names < vacuumvacuumcleanerselectrolux.com> and <vacuumvacuumcleanerselectrolux.mobi> contain the trademark ELECTROLUX in its entirety preceded by the terms “vacuum” and “vacuumcleaner”. These terms are insufficient to distinguish the Complainant’s trademark from the disputed domain names. Internet users will understand the addition of the descriptive terms “vacuum” and “vacuumcleaner” to the Complainant’s trademark in the sense that Respondent’s websites are specifying some of the products offered by the Complainant. So Internet users would be confused into thinking that it was associated with the Complainant.
The addition of the generic top level domain name “.com” and “.mobi” may be disregarded for the purpose of this comparison. It is well established in previous UDRP cases that the added of top-level domains – being a required element of every domain name – is irrelevant when assessing whether or not a mark is identical or confusingly similar.
In the light of the above, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark ELECTROLUX.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.
The following are examples of circumstances where Respondent may have rights or legitimate interests in a disputed domain name (Paragraph 4(c) of the Policy):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the trademark ELECTROLUX. The Complainant has prior rights in the trademark ELECTROLUX which precede the Respondent’s registration of the disputed domain names. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (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). See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
This Panel does not believe that before any notice of this dispute, Respondent was using the disputed domain names in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i) to (iii) of the Policy in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain names in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be established.
Pursuant to paragraph 4(b) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
(i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location.
As to registration in bad faith, the Complainant has asserted that given the well-known and reputation of its trademark ELECTROLUX, it is not possible to conceive that the Respondent would have been unaware of this fact at the time of registration. In the Panel’s opinion, in light of Complainant’s numerous trademark registrations and the fact that ELECTROLUX is a well-known trademark it cannot reasonably be argued that the Respondent could have been unaware of the trademark rights vested therein when registering the disputed domain names (Inter-IKEA Systems B.V. v. McLaughlin Mobility, WIPO Case No. 2000-0499).
As to use in bad faith, the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites.
In addition, the Complainant has asserted that the websites redirected to commercial websites linking to “www.amazon.com” where the Complainant’s products were offered. This assertion has not been rebutted by the Respondent. This is strong evidence of bad faith (Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
At the date of this decision, the disputed domain names are resolved to inactive websites. It has been established in many UDRP cases that passive holding does not as such prevent a finding of bad faith. Indeed the apparent lack of active use under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028). See also the WIPO Overview 2.0, 3.2. In the present case, the Panel finds that the cumulative circumstances that the Complainant has a well-known trademark and no response to the complaint has been filed are also indicative of bad faith.
Thus the Panel concludes that the Respondent has registered and used in bad faith the disputed domain names.
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 <vacuumvacuumcleanerselectrolux.com> and <vacuumvacuumcleanerselectrolux.mobi> be transferred to the Complainant.
Ana María Pacón
Date: January 4, 2013