WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Primoz Safaric / Whois Privacy Protection Service, Inc.
Case No. D2012-2332
1. The Parties
The Complainant is AB Electrolux, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Primoz Safaric of Apace, Slovenia / Whois Privacy Protection Service, Inc., Whois Agent, of Bellevue, United States of America.
2. The Domain Name and Registrar
The disputed domain name <beam-electrolux.net> is registered with eNom Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2012, 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 November 29, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 29, 2012.
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 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 20, 2012.
The Center appointed Ana María Pacón as the sole panelist in this matter on January 8, 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.
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 United States “US” registrations No. 2976482, 3066400, 933368, 284377, 995587, 248774, 2747782, 2808980, 195691, 1617477, 562427 and 2822948. These trademarks have been also incorporated in domain name registrations in the “.com”, “.info”, “.org” and “.net” TLDs.
According to a printout of the WhoIs database the disputed domain name was registered on June 4, 2012.
5. Parties’ Contentions
The Complainant contends the following:
- The disputed domain name comprises 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 name is confusingly similar to the trademark ELECTROLUX. The addition of the prefix “beam” is not relevant and will not have any impact on the overall impression of the dominant part of the name, “electrolux”. Instead, the suffixes strengthen the impression that the disputed domain name is owned or in some way connected to the Complainant. Also the addition of the gTLD “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain name.
- 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 name. 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 name is 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 name is redirecting to a website offering Electrolux products. Thus, the Respondent has intentionally chosen a domain name based on a well-known trademark with the purpose of selling the disputed domain name to a reseller of the Complainant’s products.
- The Complainant tried to contact the Respondent on October 4, 2012, through a cease and desist letter. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees. The Respondent replied and stated that he would sell the disputed domain name to a company named Omega d.o.o. This company is the same as the owner of the website to which the disputed domain name redirects.
- At the time when the cease and desist letter was sent, the WhoIs displayed a different registrant. The current WhoIs displays a “privacy contact”. Privacy services can be used to mask cybersquatting.
- It is evident that Respondent registered the disputed domain name with the intention to selling it to a dealer of Electrolux products.
- The Respondent is using the disputed domain name for his own commercial gain.
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 name <beam-electrolux.net> contains the trademark ELECTROLUX in its entirety. The descriptive term “beam” is insufficient to distinguish the Complainant’s trademark from the disputed domain name. In addition the term “beam” is a brand of the Complainant. Internet users will understand the addition of the term “beam” to the Complainant’s trademark in the sense that Respondent’s website is specifying some of the products offered by the Complainant. So Internet users would likely be confused into thinking that it is owned or associated with the Complainant.
The addition of the generic top level domain name “.net” 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 name is 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 name 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 name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name 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, based on the circumstances described, the Respondent was using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is currently redirecting to a website offering Complainant’s products. In order that the use of the disputed domain name must be considered bona fide the site must accurately disclose the registrant’s relationship with the trademark owner. It may not falsely suggest that it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents (Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
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 name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, as is the case here, 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 name 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 nature 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 name (Inter-IKEA Systems B.V. v. McLaughlin Mobility, WIPO Case No. 2000-0499). In fact, the Respondent has admitted in his answering email to the cease and desist letter that he knows “Electrolux company very well and even better the BEAM Electrolux” (Annex 11(1) to the Complaint). Based on the particular circumstances in the case and that the Respondent is not known under the name, it is obvious for the Panel that the disputed domain name has been registered in bad faith.
As to use in bad faith, at the date of this decision, the disputed domain name is being used to redirect to another website. 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.
The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the website at the domain name <beam-electrolux.net>. Moreover Respondent did not respond formally to the Complaint.
The Complainant has submitted evidence that the Respondent is willing to sell the disputed domain name to the highest bidder. It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372, Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004). The Panel finds, in the absence of rebuttal by the Respondent that the Complainant has adequately supported the inference that the Respondent's actions and correspondence satisfy the “intent to sell” requirement of paragraph 4(b)(i) of the Policy.
The attempt by the Respondent to hide its identity, and the change of registration details shortly after the Complainant has sent the cease and desist letter on October 4, 2012, also support a finding of bad faith. Although privacy shields might be legitimate in some cases – such as protecting the identity of a critic against reprisal – it is difficult to see why in the present case the Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting. That activity suggests that the Respondent has sought to frustrate this proceeding, and prevent any better examination of its intentions with respect to the disputed domain name (Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598, The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156). See also the WIPO Overview 2.0, paragraph 3.9.
Although not decisive, the Panel also puts weight on the fact that the Respondent has not honored the Panel with a response and thus provided no evidence of any actual or contemplated good faith use of the disputed domain name.
Thus the Panel concludes that the Respondent has registered and used in bad faith the disputed domain name.
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 <beam-electrolux.net> be transferred to the Complainant.
Ana María Pacón
Date: January 22, 2013