WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Ong Bui TrungKien
Case No. D2012-2320
1. The Parties
The Complainant is AB Electrolux, Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ong Bui Trung Kien, Ha Noi, Vietnam.
2. The Domain Name and Registrar
The disputed domain name <suamaygiatelectroluxvn.com> (the “Disputed Domain Name”) is registered with OnlineNIC, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2012. On November 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 29, 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.
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 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2012.
The Center appointed John Swinson as the sole panelist in this matter on January 10, 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 AB (Aktiebolaget) Electrolux, a Swedish joint stock company founded in 1901 and registered as a company in 1919. The Complainant is one of the leading producers of appliances and equipment for kitchen and cleaning both for home and professional use. The Complainant is the owner of leading brands including ELECTROLUX, AEG and AEG-ELECTROLUX.
The trade mark ELECTROLUX is registered as a word mark and a figure mark in over 150 countries. The Complainant also uses the trade mark ELECTROLUX in a number of domain name registrations in different generic top-level domains (gTLDs) and country code top-level domains (ccTLDs) including <electrolux.vn> and <electrolux.com>.
The Respondent is Ong Bui Trung Kien of Ha Noi, Vietnam. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on April 18, 2012. The Disputed Domain Name is connected to a website (the “Website”) which displays the ELECTROLUX trade mark and offers services in relation to ELECTROLUX products.
5. Parties’ Contentions
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the trade mark ELECTROLUX. The addition of the prefixes “sua” and “maygiat” is not relevant and will not have any impact on the overall impression of the dominant part of the Disputed Domain Name, the word “electrolux”, instantly recognizable as a world famous trade mark.
The English translation of the Vietnamese prefix “maygiat” is “air-conditioner”. As the Complainant offers similar goods for sale, this prefix strengthens the impression that the Disputed Domain Name belongs to, or is affiliated with the Complainant.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondent is not commonly known by the Disputed Domain Name;
- the Complainant has not licensed or authorized the Respondent to use the ELECTROLUX trade mark;
- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services (the Website misleadingly offers services for ELECTROLUX branded products and uses the protected logotype for ELECTROLUX); and
- the Respondent is not an authorized reseller of the Complainant’s products.
Registered and Used in Bad Faith
The Disputed Domain Name has been registered and is being used in bad faith for the following reasons:
- the ELECTROLUX trade mark has the status of a well-known and reputed trade mark with a substantial and widespread reputation throughout the world (the Complainant cited a number of previous WIPO UDRP decisions concerning the ELECTROLUX trade mark);
- the Respondent did not respond to the cease and desist letter and reminders sent by the Complainant’s legal representatives in relation to the registration and use of the Disputed Domain Name; and
- the Website offers services for ELECTROLUX branded products, as such, the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the ELECTROLUX trade mark as to the source, sponsorship affiliation or endorsement of the Website (see similar case of Aktiebolaget Electrolux v. Maksim, SPD Chervinchuk, WIPO Case No. D2011-0403).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the ELECTROLUX trade mark.
The Complainant asserts that it owns the ELECTROLUX trade mark in a large number of jurisdictions, and provided evidence of ownership. The Panel accepts that the Complainant owns the ELECTROLUX trade mark and that the mark is well-known.
The Disputed Domain Name is a combination of the ELECTROLUX element with the descriptive prefixes “sua” and “maygiat” and the suffix “vn”. The Complainant submitted that the English translation of the Vietnamese suffix “maygiat” is “air-conditioner”. The Panel has conducted its own investigations, as it is entitled to, and has found that the Vietnamese words “máy giặt” mean “washing machine” and “sửa” means “fix” or “repair”. The suffix “vn” is the country code top‐level domain (ccTLD) for Vietnam. The “.com” at the end of the Disputed Domain Name may be disregarded when assessing confusing similarity under the Policy and is thus ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
The Panel finds that ELECTROLUX remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms (such as “washing machine”, “fix”, “repair” or “vn”) to a trade mark does not prevent confusingly similarity (see e.g. AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 and the cases cited therein).
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Respondent has made out a prima facie case. This finding is based upon the following:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;
- there is no evidence that the Respondent has any connection with the ELECTROLUX trade mark and the Complainant has not given the Respondent any permission to use the mark; and
- there is no evidence of the Respondent currently using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 formulated a test to determine bona fide. The conduct of a respondent must comply with all of the following requirements:
- the respondent must actually be offering the goods of the complainant;
- the respondent must use the website to sell only the trade marked goods of the complainant;
- the website of the respondent must accurately disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
Here, the Respondent may possibly satisfy the first, second and fourth requirements of the test. However, the third requirement is not satisfied. The Website does not appear to disclose any information regarding the Respondent’s relationship with the Complainant. Specifically, the Complainant alleges that there was no visible disclaimer on the Website (and instead copyright text in relation to the Disputed Domain Name is displayed). As such, Internet users may have been misled to assume that the Website was run by the Complainant itself, or that there was some affiliation or sponsorship between the parties.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location”.
The Complainant and the ELECTROLUX trade mark are extremely well-known (as has been confirmed in numerous previous UDRP decisions) and it would be highly unlikely that the Respondent was unaware of the Complainant, particularly because the Disputed Domain Name includes the terms in Vietnamese for “washing machine” and “fix” or “repair”.
The Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name, which wholly incorporates the Complainant’s trade mark, was likely aware that the Complainant was the owner of the ELECTROLUX trade mark because of the substantial reputation of both the Complainant and the mark.
The Respondent’s registration of a domain name that wholly incorporates the ELECTROLUX trade mark, with the addition of the descriptive terms “sua” and “maygiat” (i.e. “fix/repair washing machine”) which are used in the Complainant’s line of business, and the suffix “vn” which references the Respondent’s place of business, indicates that the Respondent registered the Disputed Domain Name to mislead users into thinking it is some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent’s activities are approved or endorsed by the Complainant.
It appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation. This constitutes bad faith (see e.g. eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156 and Nicole Richie v. Sonny Ahuja, WIPO Case No. D2012-0500). The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see Encyclopaedia Britannica, Inc. v. John Zuccarini, WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <suamaygiatelectroluxvn.com> be transferred to the Complainant.
Date: January 24, 2013