WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Li Yong

Case No. D2013-0193

1. The Parties

The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Li Yong, Guangzhou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <electroluxgzwx.com> (the “Disputed Domain Name”) is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 7, 2013, 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 February 8, 2013, the Center transmitted an email to the Parties in both Chinese and English languages regarding the language of proceedings. On February 8, 2013, 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 February 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on March 18, 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 a Swedish company and its products marketed under the ELECTROLUX trademark include home appliances and appliances for professional use. The Complaint sells more than 40 million products to customers in 150 countries every year, including China.

The Complainant is the owner of numerous registered trademarks for ELECTROLUX, inter alia, Community Trade Mark Registration No. 77925 ELECTROLUX in classes 3, 7, 8, 9, 11, 16, 20, 21, 35 and 37 and Chinese Trade Mark Registration No. 862864 ELECTROLUX in class 11. The registered trademarks herein are registered in 1996 and valid through 2016.

According to WhoIs data, the Respondent is Li Yong, Guangzhou, Guangdong, China and registered the Disputed Domain Name, <electroluxgzwx.com>, on September 21, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The dominant part of the Disputed Domain Name, <electroluxgzwx.com>, comprises the word “electrolux”, which is identical to the Complainant’s ELETROLUX trademark. The Complainant has not found that the suffix “gzwx” should have a specific meaning, and “.com” is a top-level domain. Neither of these elements have any impact on the overall impression of the dominant portion of the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name. The Complainant has not given the Respondent any license or authorization of any other kind to use the Complainant’s trademark. The mere registration of the Disputed Domain Name does not give the Respondent a right or a legitimate interest in respect of the Disputed Domain Name. The Complainant has also not found any evidence to suggest the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The ELECTROLUX trademark has widespread reputation throughout the world. The considerable value and good will of the trademark made the Respondent register the Disputed Domain Name. The Complainant first tried to contact the Respondent on December 20, 2012 through a cease and desist letter and intended to settle this dispute through negotiation. The Respondent never replied and this is relevant in a finding of bad faith.

The Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the web site to which the Disputed Domain Name resolves to, by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation, or endorsement of the web site. There is no disclaimer or other information stating the non-existing relationship between the Disputed Domain Name and the Complainant. In fact, the Respondent not only used the Complainant’s ELECTROLUX trademark in the Dispute Domain Name, it also displayed the Complainant’s ELECTROLUX logotype on the web site. The Respondent was obviously aware of the rights the Complainant has in the ELECTROLUX trademark at the point of the registration and is misleadingly diverting consumers for his own commercial gain.

Furthermore, the Respondent has been involved in a previous UDRP case, Aktiebolaget Electrolux v. Li Yong, WIPO Case No. D2012-1782, regarding the domain name <gzelectrolux.com> which was recovered by the Complaint from the Respondent and the domain name was transferred to the Complainant in early January 2013. The Respondent also refers to <gzelectrolux.com> at the bottom of the web site under the Disputed Domain Name. This is also evidence indicating the Respondent’s knowledge of the ELECTROLUX trademark as well as its bad faith in registration and use of the Disputed Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issues

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding”.

The Registrar confirmed by email that the language of the Registration Agreement for the Disputed Domain Name is both Chinese and English on February 7, 2013. A complaint submitted in either of the languages of the Registration Agreement would be compliant and the Complaint was submitted in English. Thus, the language of the proceeding shall be English.¹

7. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the Disputed Domain Name, each of the following:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of a number of ELECTROLUX trademarks in China and internationally. Further, the evidence submitted establishes that the Complainant’s products have been sold on a substantial and worldwide basis under this trademark, including China.

The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Disputed Domain Name contains the “electrolux” string, which is identical to Complainant’s ELECTROLUX trademark, in conjunction with “gzwx” and “.com”.

It is also established by the earlier UDPR panels that “a domain name that essentially incorporates a trademark in its entirety save for the addition of extra letters as prefixes is generally not distinguishable from the trademark.” (Picanol, Naamloze Vennootschap (N.V.) v. zhejiang qingsheng jituan yanjiusuo fangji xianluban kaifa weixiu zhongxin shaoxingxian yangxunqiaozhen jiangqiao qingsheng jituan, WIPO Case No. D2008-0968). The Disputed Domain Name incorporates the ELECTROLUX trademark in its entirety and the suffix “gzwx” is not sufficient to distinguish the Disputed Domain Name from the Complainant’s registered trademark. The dominant and distinctive part of the Disputed Domain Name remains the ELETROLUX trademark.

As for the applicable top-level domain suffix such as “.com” in the Disputed Domain Name, it is a consensus view that it could usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:

“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant […]”.

In the present case, the Complainant has established that it is the owner of the ELECTROLUX trademark in China, and it has used the ELECTROLUX trademark on the Internet through its websites at “www.electrolux.com” and “www.electrolux.cn”. Furthermore, the Complainant has stated that it has no connection or affiliation with the Respondent. The Respondent has not received any authorization from the Complainant to use the ELECTROLUX trademarks in the Disputed Domain Name or in any other manner. The Complainant also states that it has found no evidence to suggest that the Respondent has any registered trademarks or trade names that correspond to the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent does not provide any allegation or evidence indicating that he before any notice of the dispute at issue use or demonstrably prepare to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. No evidence indicates that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name or is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. From the evidence submitted it is clear that the Respondent is using the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to a website at the Disputed Domain Name, which cannot be considered a legitimate noncommercial or fair use.

Having considered the above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and in the absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the Panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 Respondent’s website or location or of a product or service on the Respondent’s web site or location.”

According to the evidence submitted by the Complaint, the Complainant has registered the ELECTROLUX trademark in many countries in the world, including China, and the Complaint states that the products with ELECTROLUX trademark have been sold to many countries in the world. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the word “electrolux” as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. The Respondent intentionally registered the Disputed Domain Name that incorporates the ELECTROLUX trademark in its entirety, and suffixes such as “gzwx” and “.com” do not diminish the confusion to the Internet users between the Disputed Domain Name and the ELECTROLUX trademark.

Moreover, the active website under the Disputed Domain Name states that the copyright of the web site belongs to “伊莱克斯维修服务中心” (“Electrolux Maintenance Service Center”) and “gzelectrolux.com”. In an earlier UDRP decision involving the same Respondent, the previous panel decided that the Respondent had registered <gzelectrolux.com> in bad faith on March 8, 2012 to promote services that are connected to the Complainant’s services and products (Aktiebolaget Electrolux v. Li yong, WIPO Case No. D2012-1782). It is therefore clear that the Respondent knew of the Complainant’s ELECTROLUX trademark when it registered the Disputed Domain Name on September 21, 2012. The Panel finds that the Respondent registered the Disputed Domain Name intentionally to attract, for commercial gain, Internet users to its website. Therefore, the Panel finds that the Disputed Domain Name has been registered in bad faith.

The Respondent uses the ELETROLUX trademark on the front page of the web site to which the Disputed Domain Name resolves and identifies itself as “伊莱克斯维修服务中心” (“Electrolux Maintenance Service Center”), providing maintenance services for home appliance and appliance for professional use in Guangzhou and Shenzhen, China. With such use, the Respondent creates a false impression that it is a maintenance service center that is sponsored, affiliated or endorsed by the Complainant in Guangzhou and Shenzhen. The website under the Disputed Domain Name indicates that the copyright of the web site belongs to “伊莱克斯维修服务中心” (“Electrolux Maintenance Service Center”) and “gzelectrolux.com” and such copyright claim is likely to contribute to even greater confusion among Internet users regarding the possible relationship between the Complainant and the Respondent. Therefore, the Panel finds that the Disputed Domain Name is being used in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

7. Decision

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 <electroluxgzwx.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: March 30, 2013

¹ The Panel notes that the Registrar has later sent an email to the Center indicating: “Please use Chinese”. This, however, does not change the fact that the Registration Agreement for the Disputed Domain Name in this case is both Chinese and English and that a complaint submitted in either language is therefore compliant.