WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Dong Xinren
Case No. D2012-2322
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Dong Xinren of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <shelectroluxshfw.com> (the “Domain Name”) is registered with Xin Net Technology Corp. (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 Domain Name. On November 26, 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. On November 27, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of 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 December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on January 11, 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, AB Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning, selling more than 40 million products to customers in 150 countries every year including in China, where the Respondent is located. The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers, and are sold under various trade marks including ELECTROLUX, AEG, AEG-ELECTROLUX. In 2009, the Complainant had sales of SEK 109 billion.
The ELECTROLUX trade mark is registered in more than 150 countries including in China under registration numbers 70055, 862864 and 380211. Due to the extensive use of the ELECTROLUX trade mark, the Complainant has established goodwill and reputation in the ELECTROLUX mark. The Complainant has also registered the trade mark ELECTROLUX as a domain name under almost 700 general Top Level Domains (gTLDs) and country code Top Level Domains (ccTLDs) worldwide including <electrolux.com> and <electrolux.com.cn>.
The Respondent registered the Domain Name on June 12, 2012. The Domain Name is connected to a Chinese website (the “Website”) which offers repair services for ELECTROLUX products. 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 Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the ELECTROLUX trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in section IV of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the Respondent has never taken the trouble to answer the cease and desist letter in English; the natural thing to do when one does not understand the content of a letter is to send an email asking for clarification. Further, as the Complainant is not familiar with the Chinese language, conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese when the Respondent has just ignored all attempts to resolve the matter amicably.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name ELECTROLUX through use and registration that predates the Domain Name.
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
The Domain Name integrates the Complainant’s registered trade mark ELECTROLUX with the two letter prefix, “sh” followed by the letters “shfw” and the gTLD “.com”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. The word ELECTROLUX is clearly recognizable within the Domain Name. The addition of the letters “sh” as a prefix and the letters “shfw” at the end of the word ELECTROLUX do not negate the confusing similarity encouraged by the Respondent’s complete integration of the ELECTROLUX trade mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the ELECTROLUX trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant alleges that it has not found that the Respondent has any trade marks or trade names that correspond to the Domain Name. It has also not licensed, consented or otherwise authorized the Respondent to use its ELECTROLUX trade mark in the Domain Name or any other manner.
The consensus view under paragraph 2.3 of the WIPO Overview 2.0 says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent is not an authorized dealer, reseller or repairer. Nonetheless, at the bottom of the home page on the Website, the Respondent claims to be the “ELECTROLUX kitchen official service center”. It is clear to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 “… that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark.”
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s ELECTROLUX trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant’s well-known trade mark in its entirety and the Respondent is purporting to be a repair centre for Electrolux goods without authorization from the Complainant is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website which includes the false statement “ELECTROLUX kitchen official service center” is calculated to confuse Internet users into believing that the Respondent is an authorized repairer of the Complainant’s goods when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website and the products sold on them were authorized or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
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 <shelectroluxshfw.com> be transferred to the Complainant.
Dated: January 26, 2013