WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. guojinran
Case No. D2013-1240
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is guojinran of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <electroluxw.com> is registered with Shanghai Yovole Networks, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 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 July 15, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 July 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on August 13, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 20, 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 company incorporated in Sweden and the owner of registrations in more than 150 countries worldwide for the trade mark ELECTROLUX, including in China, where the Respondent is based (the “Trade Mark”). The Complainant has also registered almost 700 gTLD and ccTLD domain names worldwide containing the Trade Mark, including <electrolux.com>, <electrolux.net>, <electrolux.info>, <electrolux.com.hk> and <electrolux.com.cn>.
The Respondent is an individual apparently with an address in China.
C. The Disputed Domain Name
The disputed domain name was registered on March 10, 2013.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant 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 kitchens and for cleaning, both for home use and for professional use, selling more than 40 million products to customers in 150 countries every year. The Complainant’s products sold under the Trade Mark include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers (the “Goods”). In 2010, Electrolux had sales of SEK 109 billion and 55,150 employees.
Due to its extensive and long-term use on products and services of the Complainant and the Complainant’s substantial expenditure on advertising, the Trade Mark has become a well-known mark in respect of the Goods.
The disputed domain name is confusingly similar to the Trade Mark. The addition of the letter “w”, which does not have any particular meaning, does not have any effect on the confusing similarity between the disputed domain name and the Trade Mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trade mark rights in respect of the disputed domain name and has not been licensed or authorised by the Complainant to use the Trade Mark.
The disputed domain name is being used in respect of a website which features prominently the Trade Mark and the Complainant’s Electrolux logo (“the Website”). The Website contains Chinese and English language copyright notices which suggest that the Respondent has rights in the Electrolux logo and the Trade Mark.
The Respondent is not an authorised reseller of the Complainant’s goods and the Website does not contain a disclaimer of any relationship between the Respondent and the Complainant.
By its use of the disputed domain name and the Website, the Respondent is seeking to sponge off the Complainant’s reputation in the Trade Mark.
The Complainant sent a cease and desist letter to the Respondent, but the Respondent has failed to respond.
The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith to intentionally attract users, for commercial gain, to the Website, by creating confusion with the Trade Mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; and Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant sent the cease and desist letter in English, and the Respondent did not respond. Naturally, if a registrant did not understand and was acting in good faith, it would reply to the communication, asking for clarification; and
(2) It would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
The Respondent did not make any submissions with respect to the language of the proceeding and did not file a Response.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; and Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Whilst the Panel does not find the first ground in support of the Complainant’s language request at all convincing, the Panel notes the Website contains a not insubstantial amount of English. This would suggest it is likely that the Respondent is conversant and proficient in the English language.
Having considered all the matters above, and in particular given the failure of the Respondent to make any submissions with respect to the language of the proceeding (or indeed to file a Response), and in order to prevent further delay and translation costs, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In the present case, the Panel concludes that the addition of the non-distinctive letter “w” does not serve to distinguish the disputed domain name from the Trade Mark in any way.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use 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) 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 trade mark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. The Respondent has not been authorised to use the Complainant’s Electrolux Logo and Trade Mark featured prominently on the Website.
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.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The Website uses the language “Beijing Electrolux air conditioning repair centre” to describe the business featured on the Website. The Panel finds that this, together with the prominent and unauthorised use of the Complainant’s logo and the Trade Mark on the Website, the use of the copyright notice, and the absence of any disclaimer of any relationship with the Complainant, provides clear evidence of bad faith.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following the filing of the Complainant, the Website has been taken down. The disputed domain name is currently inactive. In all the circumstances, the Panel concludes this constitutes further evidence of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <electroluxw.com> be transferred to the Complainant.
Date: September 3, 2013