WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Paulo Henrique Petrucci
Case No. D2013-1587
1. The Parties
The Complainant is Aktiebolaget Electrolux, of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Paulo Henrique Petrucci, of Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <electrolux-servicos.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 September 16, 2013, the Complainant filed an amendment to the Complaint.
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 September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. Because of an administrative oversight, the Respondent was granted an additional 5 days to file a response on October 8, 2013. The Respondent did not submit any response by the extended deadline of October 13, 2013. Accordingly, the Center notified the Respondent’s default on October 14, 2013.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 23, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a Response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is the Swedish company Aktiebolaget Electrolux, a world leading producer of appliances and equipment for kitchen and cleaning, founded in 1909, incorporated in 1919 and owning several trademark registrations for ELECTROLUX in more than 150 countries, including Brazil, the country in which the Respondent is located.
The Complainant provided evidence in support of the above.
The disputed domain name <electrolux-servicos.com> was registered on June 11, 2013. At the time of filing of the Complaint, the disputed domain name resolved to a website offering repair services for the Complainant’s products.
5. Parties’ Contentions
The Complainant states that the disputed domain name <electrolux-servicos.com> is confusingly similar to its trademark ELECTROLUX, being a combination of the generic word “servicos” and the Complainant’s trademark ELECTROLUX.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to reserve the disputed domain name or to register and/or use its trademark within the disputed domain name and it is not commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further asserts that its trademark ELECTROLUX is well known and the Respondent could not have registered and used the disputed domain name in good faith, that is without knowledge of the Complainant’s trademark rights, especially because the website at the disputed domain name is offering repair services for the Complainant’s products.
Moreover, the use of the Complainant’s well known trademark ELECTROLUX on the Respondent’s website is likely to confuse Internet users into believing that the Respondent is an official dealer or repairer of the Complainant’s products. Internet users are also likely to be confused because the Complainant’s logo is reproduced beside the trademark ELECTROLUX on the homepage of the Respondent’s website at the disputed domain name.
On July 6, 2013 the Complainant sent a cease and desist letter to the Respondent, without receiving any reply.
The Respondent has made no formal substantive reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name 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 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 Panel finds that the Complainant is the owner of the trademark ELECTROLUX both by registration and acquired reputation and that the disputed domain name <electrolux-servicos.com> is confusingly similar to the trademark ELECTROLUX.
Regarding the addition of the generic word “servicos” (meaning “services” in Portuguese), the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “servicos” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
According to the majority view in relation to the issue of resellers, as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“[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 the use fits 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.” (WIPO Overview 2.0, paragraph 2.3).
This summary is mainly based on the panel’s decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In the present case, the Respondent does not seem to be selling the Complainant’s products through the website at the disputed domain name, but is rather providing repair services for such products. However the Complainant is also providing repair services as part of its business and therefore the Panel is of the opinion that the first two elements of the Oki Data test are fulfilled in order to consider bona fide the activity of the Respondent.
It is with regard to the third element of the Oki Data test that the Panel considers that the repair activity of the Respondent on the website at the disputed domain name does not constitute a bona fide offering of goods or services.
In fact there is no disclaimer or accurate disclosure of the relationship between the Respondent and the Complainant. The Respondent therefore conveys the false impression of being an authorized Electrolux service repair center. Furthermore, the Respondent uses expressions like “assistencia tecnica Electrolux” (“Electrolux technical assistance”) and, at the internal weblink “Moema”, “assistencia tecnica Autorizada Electrolux” (“Electrolux authorized technical assistance”), clearly suggesting a business relationship with the Complainant (see paragraph 2.3 of the WIPO Overview 2.0).
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) [of the Policy], the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or [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 the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) [that the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) [that the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) [that] 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 on-line 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.”
With regard to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark ELECTROLUX in the field of appliances and equipment for kitchen and cleaning is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name <electrolux-servicos.com> was confusingly similar to the Complainant’s trademark, especially because the content of the relevant website refers to repair services for the Complainant’s products, with reproductions of the Complainant's trademark and logo.
The Panel finds that the disputed domain name was also used in bad faith because on the relevant website the Respondent was offering repair services for the Complainant’s products, using the trademark and logo of the Complainant as well as expressions like “assistencia tecnica Electrolux” (“Electrolux technical assistance”) and “assistencia tecnica Autorizada Electrolux” (“Electrolux authorized technical assistance”), so that Internet users could believe that there is some kind of business relationship between the Complainant and the Respondent.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website which according to paragraph 4(b)(iv) of the Policy is evidence of the bad faith registration and use of the disputed domain name.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <electrolux-servicos.com> be transferred to the Complainant.
Date: November 2, 2013