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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Sandro Lourenco

Case No. D2013-1933

1. The Parties

Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.

Respondent is Sandro Lourenco of Leiria, Portugal.

2. The Domain Name and Registrar

The disputed domain name <refrigeradorelectrolux.com> 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 November 13, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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. The Center sent an email communication to Complainant on November 18, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 20, 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 17, 2013.

On December 17, 2013, the Center received an email communication from Respondent.

The Center appointed Roberto Bianchi as the sole panelist in this matter on January 6, 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

Complainant, Aktiebolaget Electrolux (“AB Electrolux”), is a global company producing appliances and equipment for kitchen and cleaning and one of the largest producers in the world of similar equipment for professional users. Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands such as ELECTROLUX, AEG, AEGELECTROLUX. In 2009, Complainant’s sales reached 109 billion Swedish crowns.

Complainant has registered the trademark ELECTROLUX in several classes in more than 150 countries. In particular, reference is made to the following registrations:

- Community Trademark Registration No. 000077925 ELECTROLUX, registration date September 16, 1998, filed on April 1, 1996, expiry date April 1, 2016, covering products and services in International Classes 3, 7, 8, 9, 11 (including refrigerators, freezers, ranges, ovens, microwave ovens, ventilators, fans, air-conditioners, water purifying apparatus, drying cabinets, electrical coffee brewing machines, air cleaners, humidifiers, toasters), 16, 20, 21, 35, and 37.

- International Trademark Registration No. 836605 E-ELECTROLUX, registration date March 17, 2004, expected expiration date March 17, 2014, covering refrigerators, freezers, cookers, grills, ovens, microwave ovens, air conditioning installations and apparatus, fans, cooker hoods, built-in hobs, water purifying apparatus, drying cabinets, electric coffee brewing machines, air cleaners, humidifiers, toasters, electric waffle irons, thawing cabinets, bain-maries, blast chillers, blast freezers, refrigerated counters, food service display cases for heating or refrigerating of food, radiators, electrical tumble driers and electrical water heaters, in International Class 11.

- Portuguese Trademark registrations ELECTROLUX, with registration date September 14, 2004: Trademark Registration No. 150881, filed on May 22, 1928, covering services of International Class 39; Trademark Registration No. 206383, filed on April 8, 1980, covering goods of International Class 7; Trademark Registration No. 206384, filed on April 8, 1980, covering goods of International Class 9; Trademark Registration No. 206385, filed on April 8, 1980, covering goods of International class 11, and Trademark Registration No. 208546, filed on September 25, 1980, covering services of International Class 37.

Complainant owns several hundred domain names including the term “Electrolux”, inter alia, <electrolux.pt>, <electrolux.com> and <electrolux.co.uk>.

The disputed domain name was registered on July 8, 2013.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

The dominant part of the disputed domain name comprises the word “Electrolux”, which is identical to the mark ELECTROLUX, which has been registered by Complainant in numerous countries all over the world. The disputed domain name is confusingly similar to the trademark ELECTROLUX. Considering that one of the main markets of the Complainant is refrigerators, the addition of the term “refrigerador” is rather fitted to strengthen the impression of association with the Complainant. The addition of the generic Top-Level (“gTLD”) domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity of the trademarks.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not found that Respondent has any registered trademarks ortrade names corresponding to the disputed domain name. It is also clear that no license orauthorization of any other kind has been given by Complainant to Respondentto use the ELECTROLUX trademark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. Respondent registered the disputed domain name on July 8, 2013. The mere registration ofa domain name does not give the owner a right or a legitimate interest in respect of thedomain name.

Complainant has also not found anything that would suggest that Respondent has been using the term “Electrolux” in any other way that would give him any legitimate rights in the name. Consequently Respondent may not claim any rights established by common usage. Respondent today is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is currently connected to an information website containing several sponsored ads leading to third part websites. By doing this, Respondent is misleading Internet users to a commercial web site and consequently, Respondent is tarnishing the ELECTROLUX trademark. Respondent is trying to sponge off Complainant’s world famous trademark. By doing this, Respondent is misleading Internet users to a commercial web site and consequently, Respondent is tarnishing the trademark ELECTROLUX.

The disputed domain name was registered and is being used in bad faith. The trademark ELECTROLUX has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and the world. The awareness of the trademark is to be considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the ELECTROLUX trademarks in combination with other words has skyrocketed the last years. See e.g. Aktiebolaget Electrolux v. RojIT Corporation, WIPO Case No. D2012-1330; Aktiebolaget Electrolux v. Cty DV CN So 1 Viet Nam, WIPO Case No. D2012-1141; Aktiebolaget Electrolux v. Biniewicz Jerzy, WIPO Case No. D2012-1140; Aktiebolaget Electrolux v. N//A, zhou qi jian, WIPO Case No. D2012-1139; Aktiebolaget Electrolux v. Electrolux International (HK) Co., Ltd., WIPO Case No. D2011-0752; AB Electrolux v. Pablo Rodriguez Guirao, WIPO Case No. D2011-0729; Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk, WIPO Case No. D2011-0403; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277; Aktiebolaget Electrolux v. Nomad Marketing, Ltd., WIPO Case No. D2010-1205; Aktiebolaget Electrolux v. Michael Dieckmann, WIPO Case No. D2010-1203. The considerable value and goodwill of the mark ELECTROLUX is most likely a large contribution to this, and also what made Respondent register the disputed domain name.

Complainant first tried to contact Respondent on September 9, 2013 through a cease and desist letter sent by e-mail. Complainant advised Respondent that the unauthorized use of the ELECTROLUX trademark in the disputed domain name violated Complainant’s rights in said trademark. Complainant requested a voluntary transfer of the domain name and offered compensation not exceeding out of pocket expenses. Despite a reminder sent, no response was ever received.

The disputed domain name is currently redirecting to an information website containing several sponsored ads leading to third party websites. Consequently, Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

B. Respondent

In its only communication of December 17, 2013, in this proceeding, Respondent sent an email to the Center with the following text: “Hello Can keep the domain I do not want for anything. Not got was way to get rid of him.”

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

(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

By submitting printouts of trademark databases, as well as a listing of trademark registrations in numerous jurisdictions, Complainant has shown to the satisfaction of the Panel that it owns rights in the ELECTROLUX trademark, covering numerous goods and services, including refrigerators in International Class 11. See Section 4 above.

The Panel notes that the disputed domain name contains the ELECTROLUX trademark in its entirety, only adding the generic term “refrigerador” (Portuguese and Spanish for “refrigerator”), and the gTLD “.com”. It is well established that such kind of additions are inapt to distinguish a domain name from a mark. See Aktiebolaget Electrolux v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com and Kriengsak Vadpanich, WIPO Case No. D2012-1132, relating to <electroluxcordlessvacuums.info> and <electrolux-vacuums.info> (“Further, the Panel agrees with the Complainant that the addition of the suffixes “vacuums” and “cordlessvacuums” is not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark. The Panel notes that the suffixes “-vacuums” and “cordlessvacuums” are generic and descriptive terms of the appliances or equipment for which the Complainant’s trademark ELECTROLUX is used.”). See also Aktiebolaget Electrolux v. Najam Hasan, Domains By Proxy Inc., WIPO Case No. D2008-0833, relating to <electrolux-appliances.com> (“The addition of the descriptive term “appliances” does not affect a finding that the disputed domain name is confusingly similar to Complainant’s registered trademarks. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark. See, e.g., Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.”) See also Aktiebolaget Electrolux v. Domains by Proxy, Inc., DomainsByProxy.com, /My Co Dean, WIPO Case No. D2010-0135, relating to <electroluxfridgefreezer.com>

(“The addition of the generic term “fridgefreezer” and of the top-level domain “.com” does not detract from the confusing similarity between the domain name and mark.”)

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s ELECTROLUX trademark.

B. Rights or Legitimate Interests

Complainant contends that it has not found that Respondent may have any registered trademarks or trade names corresponding to the disputed domain name, and that Complainant has not given Respondent any license or authorization to use the ELECTROLUX trademark. Further, says Complainant, Respondent is not an authorized dealer of Complainant’s products, and has never had a business relationship with Complainant. Complainant adds that the mere registration of the disputed domain name does not give its owner a right or a legitimate interest in respect of the disputed domain name. Presently, the disputed domain name is connected to an information website containing several sponsored ads leading to third part websites. Complainant contends that there is nothing that would suggest that Respondent has been using the disputed domain name in any other way that would give him any legitimate rights. Consequently, Respondent may not claim any rights established by common usage. Complainant argues that Respondent is misleading Internet users into a commercial web site and consequently, tarnishing the trademark ELECTROLUX, while trying to sponge off Complainant’s world famous trademark. Accordingly, states Complainant, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.

In the opinion of the Panel, Complainant’s contentions and supporting evidence, which have not been contested by Respondent, amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Panel believes that Respondent’s only communication – following the notification of the Complaint and transcribed at Section 5 B. above – appears to evidence a lack of any subjective interest by Respondent in the disputed domain name, as well as its readiness to relinquish the property of the disputed domain name. Given that this communication is not sufficiently clear the Panel decides not to consider it an unconditional offer to transfer to domain name to Complainant in this proceeding. In any case, in the opinion of the Panel, this short communication from Respondent rather suggests that Respondent is unable to come forward with any comments, arguments or evidence whatsoever in its own favor to retain registration of the disputed domain name.

For these reasons, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that previous UDRP panels have considered that the ELECTROLUX trademark is well known and even notorious. See inter alia, AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 (“The first domain name in dispute, <electrolux-aeg-servisi.com>, adopts two of Complainant’s widely known trademarks”); Aktiebolaget Electrolux v. Najam Hasan, Domains By Proxy Inc., Supra (“The Panel accepts the Complainant’s contentions that Aktiebolaget Electrolux is a well-known company worldwide in the field of kitchen, cleaning and outdoor appliances and that the ELECTROLUX trademark is a notorious trademark worldwide.”); and Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031 (“In the present case, the disputed domain name incorporates the Complainant’s well-known and widely-registered trademark ELECTROLUX. The addition of the word ‘grupo’ is purely descriptive and does not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant’s registered trademark ELECTROLUX.”)

Given the international renown of Complainant’s ELECTROLUX mark, which the Panel recognizes, the fact that the disputed domain name consists of this well-known mark plus the generic term “refrigerator” (an appliance typically covered by the mark), and the circumstance that the texts shown on the website at the disputed domain name referred to ELECTROLUX as a “big brand”, lead the Panel to conclude that Respondent knew of, and targeted, Complainant, its trademark and products when the disputed domain name was registered, i.e. the disputed domain name was registered in bad faith.

As shown by Complainant with a printout of the website at the disputed domain name this website contained links to several commercial websites unrelated to Electrolux, thus presumably generating click-through income for Respondent. In the opinion of the Panel, this shows that Respondent is using the ELECTROLUX trademark to attract Internet users looking for content related to this well-known mark to lure them into clicking on these commercial links to generate click-through income, thus profiting from the confusion created among those Internet users. In this Panel’s assessment, this is sufficient proof of registration and use in bad faith of the disputed domain name pursuant to Policy, paragraph 4(b)(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.”)

On January 14, 2014 the Panel visited the website “www.refrigeradorelectrolux.com” and noticed that the texts in Portuguese shown on the website and referring to ELECTROLUX refrigerators had been removed and were replaced by a legend stating, “ERROR 403 – FORBIDDEN”. In the opinion of the Panel, this change in content does not negate the previous use in bad faith of the disputed domain name. Together with the only communication from Respondent in this proceeding (see Section 5, B), it rather suggests that Respondent does not contemplate any use of the disputed domain name other than as above described, i.e., in bad faith.

Considering the circumstances above, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.

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, <refrigeradorelectrolux.com>, be transferred to the Complainant.

Roberto Bianchi
Sole Panelist
Date: January 15, 2014

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