WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. ibp
Case No. D2013-0795
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is ibp of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <suamaygiatelectrolux.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2013. On May 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 23, 2013
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 May 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2013.
The Center appointed Keita Sato as the sole panelist in this matter on June 19, 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.
On June 24, 2013, the Panel issued Administrative Panel Order No.1 requesting the Complainant to submit details on its trademark registration in Viet Nam. The Complainant submitted additional evidence in Annex 6B and Annex 6C to the Complaint by e-mail, which was sent to the Center on June 25, 2013.
4. Factual Background
The Complainant Aktiebolaget Electrolux is a registered Swedish company located in Stockholm. It has registered ELECTROLUX and E ELECTROLUX trademarks for several classes including washing machines, repair services for washing machines etc. in many countries. It has also registered E ELECTROLUX (word “Electrolux” with a figure, shown in Drawing 1) as an international registration registered with International Bureau (Madrid System) on March 17, 2004, with registration number 836605. In addition, the Complainant registered the trademark E ELECTROLUX with a figure in Viet Nam on November 26, 1993, with registration number 16,603.
The Respondent is ibp, located in Ha Noi, Viet Nam, according to the Whois record.
The disputed domain name was registered on February 6, 2013 through the Registrar, GoDaddy.com, LLC.
5. Parties’ Contentions
The Complainant states that it has registered the trademark ELECTROLUX as a word mark and the trademark E ELECTROLUX as a word and figure mark, both for several classes in more than 150 countries. It has also registered domain names incorporating the trademark ELECTROLUX numerous gTLDs and ccTLDs. The Complainant insisted that the awareness of the trademark ELECTROLUX is considered in the whole world to be significant. Based on these situations, the Complainant contends that the Respondent’s bad faith conduct meets the three requisite elements of paragraph 4(a) of the Policy.
First, the dominant part of the disputed domain name comprises the word “Electrolux”, which is identical to the registered trademark ELECTROLUX. And the addition of “suamaygiat” to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity.
Second, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant insisted that it has not found any registered trademarks or trade names corresponding to the disputed domain name on behalf of the Respondent. And the Complainant gave no license or authorization to the Respondent to use the trademark. The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, since the Respondent is misleading Internet users to a commercial website offering services for “Electrolux” products. Under the Complainant’s allegation, the Respondent is also using the ELECTROLUX trademark and logo on the website operated by the Respondent.
Third, the Complainant contends that, by registering and using the disputed domain name incorporating the widely known and famous trademark ELECTROLUX, the effect is to mislead Internet users into thinking that the Respondent is connected to the Complainant and its business.
The Respondent did not reply to the Complainant’s contentions, although the Respondent sent a short reply to the Center via e-mail on May 27, 2013, which confirmed reception of the Complaint1.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(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;
(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 contends that the disputed domain name is similar to its trademarks. The Complainant has the international registration for ELECTROLUX registered with the International Bureau (Madrid System) on March 17, 2004 (registration number 836605) and many other registrations with many countries’ trademark authorities, as explained in section 4. above. The disputed domain name and trademark ELECTROLUX are not identical. However, the second level portion of the disputed domain name “suamaygiatelectrolux” could be confusingly similar to the Complainant’s registered trademark. Although the Complainant did not contend what “suamaygiatelectrolux” or “suamaygiat” means, Vietnamese people could recognize the disputed domain name as “sua may giat” plus the trademark ELECTROLUX. Since the location of the Respondent is in Viet Nam, Vietnamese language is an important factor to examine confusing similarity especially in this present case. It is true that “suamaygiatelectrolux” is meaningless in English, but “Sửa Máy Giặt” in Vietnamese means “washing machine repair” in English. Since “Sửa Máy Giặt” is a descriptive word for washing machine repair services, Vietnamese people could thus recognize “suamaygiatelectrolux” as washing machine repair services “Electrolux” (the store offers a repair service, and its store name is “ELECTROLUX”) or “ELECTROLUX washing machine repair” (the store offers a repair service solely on (or including) the washing machine made by ”Electrolux”). In the Panel’s opinion, customers for washing machine repair services likely know the name of “Electrolux”. Under the situation that ELECTROLUX is registered trademark in Viet Nam, possible customers of the washing machine repair service in either case would misleadingly imagine existence of special relationship between the Respondent and the Complainant. And the problem remained is whether “Sửa Máy Giặt” and “suamaygiat” is similar with each other. In this regard, Vietnamese language in standard has a complex system with using several additional accent marks, however, it is a normal practice in domain name to translate “Sửa Máy Giặt” into “sua may giat” or “suamaygiat”, since using non ASCII characters with accent marks in a domain name is not a common practice. The Panel thus finds that “sua may giat” is a kind of Vietnamese trascription of a descriptive word for washing machine repair services. Under these circumstances, “suamaygiatelectrolux” could be interpreted as a descriptive term plus registered trademark ELECTROLUX in Vietnamese language. The Panel in Wal-Mart Stores, Inc. v. Kuchora, Kal,, WIPO Case D2006-0033, stated that, “[i]t is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms”. The Panel would follow this formula. In this case, as the Panel explained above, the disputed domain name could be interpreted as a transcription of a descriptive term “Sửa Máy Giặt” plus registered trademark ELECTROLUX. The Panel thus finds that the first element of the Policy is made out, since the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant states that “no license or authorization of any other kinds has been given by the Complainant to the Respondent to use the trademark”. Under these circumstances, where the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Respondent has the burden of production to provide appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see, Paragraph 4(c)(i) of the Policy. See also paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ["WIPO Overview 2.0"]). In this case, the Respondent offers a washing machine repair service through the website connected to the disputed domain name (see, Annex 10 to the Complaint). However, the Respondent included the trademark logo of ELECTROLUX on its website connected to the disputed domain name. The right side frame at the Respondent’s website shows detailed information on other washing machine features (e.g. Siemens, Panasonic, Toshiba and so on). However, it could not be recognized as an evidence of bona fide offering repair services, since an authorized service or dealer sometimes has authorization by several product makers at the same time, especially repair services which need of special skills. In this Panel’s opinion the Respondent pretends to be an authorized repair business for “Electrolux”, since the main frame of the top page of the Respondent’s website has a designed and big sized “Thinking of you, ELECTROLUX” logo and description on ELECTROLUX washing machine and its company details, and no other mentions are found. Thus, the Respondent would, at a minimum, be expected to show a reasonable need to use the Complainant’s trademark logo itself. However, the Respondent has not submitted any argument and supporting evidence. Under these circumstances, the Respondent seems to have no rights or legitimate interests in the disputed domain name. It is needless to discuss in detail the Oki Data elements (see, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Based upon these findings, the Panel finds that the second element of the Policy is made out.
C. Registered and Used in Bad Faith
Firstly, the Panel will analyze the registration of the disputed domain name in bad faith. At the time of registration of the disputed domain name, the Respondent should have known the existence of the Complainant’s registered trademark in Viet Nam, since the service offered by the Respondent is a repair service for “Electrolux” products (washing machine). However, the Respondent fails to submit evidence showing it had no knowledge of the ELECTROLUX trademark registered by the Complainant.
Secondly, the Panel will analyze use of the disputed domain name in bad faith. Paragraph 4(b)(iv) of the Policy codified an example of evidence showing use in bad faith. It states, “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” In this case, by using the Complainant’s trademark, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website. Since the trademark (especially a figure of the mark) is quite unique, the Respondent could not contend that it independently created it, or similarity is coincident. Moreover, the top page of its website contains the designed logo of “Think of you, Electrolux”, which is almost the same as the logo of the Complainant’s Vietnamese official site (left top corner of the website at “www.electrolux.vn”, independently accessed by the Panel on July 2, 2013). This use of the disputed domain name by the Respondent also constitutes bad faith.
The Panel thus finds that the Respondent registered and used the disputed domain name in bad faith. The third element of the Policy is also made out.
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 <suamaygiatelectrolux.org> be transferred to the Complainant.
Date: July 3, 2013
1 The language of this proceeding should be English. The basic principle of the language of the proceeding is indicated in the Rule 11(a), which says, “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.” In this case, the registration agreement as used by the registrant of the disputed domain name was written in English.