WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Xu Zhenkang
Case No. D2013-1715
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Xu Zhenkang of Shijiazhuang, Hebei, China.
2. The Domain Name and Registrar
The disputed domain name <yilaikesishouhou.net> (“the Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 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 October 14, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On October 14, 2013, 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 in both English and Chinese, and the proceedings commenced on October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on November 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, AB Electrolux, 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 kitchen and cleaning, selling more than 40 million products to customers in 150 countries every year including in China, where the Respondent is located. The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers, and are sold under various trade marks including ELECTROLUX, AEG, AEG-ELECTROLUX. In 2009, the Complainant had sales of SEK 109 billion.
The ELECTROLUX trade mark is registered in more than 150 countries including in China. The ELECTROLUX trade mark in Chinese characters 伊莱克斯 is also registered in China on August 14, 1996 under trade mark registration number 887694. Due to the extensive use of the ELECTROLUX trade mark both in English and Chinese characters, the Complainant has established goodwill and reputation in the ELECTROLUX mark. The Complainant has also registered the trade mark ELECTROLUX as a domain name under almost 700 generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) worldwide including <electrolux.com> and <electrolux.com.cn>.
The Respondent registered the Domain Name on July 4, 2012. The Domain Name is connected to a Chinese website (the “Website”) which offers appliance repair services for ELECTROLUX products including refrigerators. The Website displays the ELECTROLUX trade mark prominently. On the home page of the Website, there is an “About Us” section which is about the Complainant. Respondent did not respond to the cease and desist letter and reminders sent by the Complainant’s legal representatives in relation to the registration and use of the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the ELECTROLUX trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in section IV of the Complaint, that the language of the proceeding should be English. The Complainant contends amongst other things that the Respondent has never taken the trouble to answer the cease and desist letter in English, the natural thing to do when one does not understand the content of a letter is to send an email asking for clarification. Further, as the Complainant is not familiar with the Chinese language and conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese when the Respondent has just ignored all attempts to resolve the matter amicably.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding email by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the trade mark ELECTROLUX and the trade mark in Chinese 伊莱克斯, the transliteration of which is YILAIKESI. The Complainant’s trade marks predate the Domain Name.
The consensus view under paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
It is also established that “domain names comprising phonetic transliterations of Chinese language trademarks are confusingly similar to such trademarks under the Policy” (Pierre Fabre Dermo-Cosmetique v. Simon Chen/personnal/jinpingguo, WIPO Case No. D2011-0769). Further, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”.
In this case the Domain Name comprises YILAIKESI which is the direct phonetic transliteration of the Complainant’s registered trade mark in Chinese 伊莱克斯 and “shouhou” which is the transliteration of the Chinese words 售后 which means “aftermarket”, a descriptive word for the activities engaged in by the Respondent as evidenced in the Website. The transliteration of the Complainant’s trade mark in Chinese 伊莱克斯 is clearly recognizable within the Domain Name. The addition of the word “shouhou” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the phonetic transliteration of the 伊莱克斯 trade mark in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant alleges that it has not found that the Respondent has any trade marks or trade names that correspond to the Domain Name. It has also not licensed, consented or otherwise authorized the Respondent to use its ELECTROLUX, 伊莱克斯, and the transliteration of the latter YILAIKESI trade mark in the Domain Name or any other manner.
“Normally, 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 its use meets 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. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent is not an authorized dealer, reseller or repairer. The Respondent calls itself Electrolux Appliance Repair Sale, Electrolux Appliances Genius Hebei Authorised Repair Service and Shijiazhuang Electrolux Refrigerator Repair. It is clear to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s ELECTROLUX and 伊莱克斯, trade marks when it registered the Domain Name. The fact that the Domain Name incorporates a transliteration of the Complainant’s well-known trade mark and the Respondent is purporting to provide services for ELECTROLUX goods without authorization from the Complainant is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website is calculated to confuse Internet users that the Respondent is an authorised repairer, service center of the Complainant’s goods when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s websites and the products sold on them were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <yilaikesishouhou.net> be transferred to the Complainant.
Date: December 5, 2013