WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon
Case No. D2014-0487
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is electroluxmedellin.com, Domain Discreet Privacy Service of Jacksonville, Florida, United State of America/ Luis Rincon of Medellin, Colombia.
2. The Domain Name and Registrar
The disputed domain name <electroluxmedellin.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2014. On March 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2014, 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 the Complainant on April 2, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 2, 2014.
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 April 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2014.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on May 19, 2014. 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
According to the Complaint, the Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919 (Complaint Annex 8, copy of certificate of incorporation). It is now a world leading producer of appliances and equipment for domestic and professional kitchen and cleaning equipment as well as being a market leader in many of the individual product categories.
The Complainant, which trades under the brand ELECTROLUX as well as under other brands, sells approximately 40 million products to consumers living in 150 different countries every year. These include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under such familiar brands as ELECTROLUX, AEG, AEG-ELECTROLUX, Zanussi, Eureka and Frigidaire. In 2013, Electrolux had sales of SEK 109 billion and 60,800 employees (Annex 8 to the Complaint). The Complainant goes on to state that, due to its extensive and lengthy promotion and use, the trademark ELECTROLUX has acquired the status of a well-known trademark internationally for appliances and equipment for kitchen, cleaning and outdoor products. Some indication that this is so is to be seen in the fact that ELECTROLUX is included in the "Superbrands 2014" list and was placed as number 46 on the RepTrak™ 100: The World's Most Reputable Companies' list for 2013, (Annex 12 to the Complaint). The Complainant has also registered the trademarks ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world (Annex 6 to the Complaint) and it should be noted that most of these were registered long before the registration of the disputed domain name. The Complainant has also registered the word ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, including >electrolux.com>,< electrolux.us> and <electrolux.com.cn> (Annex 7 to the Complaint). Further evidence of the Complainant's worldwide operations is to be found in the printout of its corporate website (Annex 9 to the Complaint).
5. Parties' Contentions
A fundamental point advanced by the Complainant, and one that underlies all of its principal contentions, is the assertion that the mark ELECTROLUX can be regarded as a well-known mark within the meanings attached to that term under article 6bis of the Paris Convention and article 16(3) of the TRIPS Agreement. In light of the evidence referred to in the preceding section, as well as in light of its extensive registrations of ELECROLUX as a trade and service mark, it is difficult to resist this contention, which then has considerable relevance to the second and third conditions that are required to be established under paragraph 4(a) (ii) and (iii) of the Policy (see further below). The Complainant notes that in at least one earlier Panel decision, the Panel readily accepted that the mark ELECTROLUX was "widely known": see AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777.
In brief, the Complainant addresses the requirements of paragraph 4(a) as follows:
1. As to sub-paragraph (i), It contends that the Respondent has registered and is using a domain name that is confusingly similar to the ELECTROLUX trade mark, notwithstanding that it contains a geographical suffix "Medellin" (the name of a city in the Respondent's country, Columbia). The Complainant argues that the addition of the suffix does not remove the confusing character of the domain name caused by the dominant use of the word ELECTROLUX, and refers to several previous Panel decisions in which such findings have been made: Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; AT&T Corp. v. WorldclassMedia.com, WIPO Case D2000-0553; PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865..
2. As to sub-paragraph (ii), it contends that there has been no authorization given to the Respondent to use its trademark as a domain name and that there is no evidence that the Respondent has been making a legitimate use of the disputed domain name in its business, Indeed, the Complainant alleges that the Respondent's offering of repair services for ELECTROLUX products on the website to which the disputed domain name links is misleading in that it falsely suggests some kind of link or connection between the Complainant and Respondent.
3. As to sub-paragraph (a)(iii), the Complainant alleges registration and use of the disputed domain name in a number of ways that meet the requirements of this sub-paragraph. Thus, given the fame if the Complainant's trade mark, the Respondent must have been aware of the longstanding registrations for the trade mark ELECTROLUX at the time of registration of the disputed domain name. Further, its use of the disputed domain is such as to attract online users to its website and thereby divert custom from the Complainant; further, it misleads online users into believing some connection or link exists between the parties.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Each of the requirements in paragraph 4(a) needs to be considered in turn, noting that the Complainant must satisfy the Panel that each of them is present before an order for transfer or cancellation may be made.
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
"…if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate."
Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the UDRP, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in its Complaint.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires that the Complainant establish that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights". There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has "rights in a trademark or service mark" (this need not be a registered mark), and, secondly, that the disputed domain name is "identical or confusingly similar" to that mark.
As to the first of these requirements, the Complainant has provided ample evidence that it has registered trade and service marks containing the word ELECTROLUX in numerous countries, including Columbia (the country of residence of the Respondent). It is unnecessary in this regard to show that the mark ELECTROLUX is either well-known or famous -registration of even one mark comprising the disputed domain name would suffice for the purpose of this limb of sub-paragraph (a)(i).
As to the second limb of sub-paragraph (a)(i), while there is no exact identity between any of the Complainant's trademarks and the disputed domain name, the Complainant's contention that there is confusing similarity is accepted. The addition of the place name Medellin as a suffix to the disputed domain name does nothing to remove the dominant effect of the word "electrolux" which thereby causes confusion as to a connection or link between the disputed domain name and the Complainant's trademark. The Panel is fortified in this conclusion by the evidence of the Complainant that indicates that the mark ELECTROLX is well known, meaning that the likelihood of confusion is even greater. Accordingly, the Panel finds that this second limb of paragraph 4(a)(i) is made out here.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has "no rights or legitimate interests in respect of the domain name". Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
"…Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Essentially, these are matters for a respondent to put forward for the Panel's consideration, as they are often difficult for a complainant to disprove directly. In the present case, where the Respondent has not filed a response, there is nothing on the record to suggest that the circumstances referred to in any of the above sub-paragraphs are present. In particular, there is no evidence that the Complainant has ever licensed or otherwise permitted the Respondent to use the mark ELECTROLUX in the disputed domain name – indeed, any such authorization is strongly rebutted by the Complainant. Neither is there anything to suggest that the Respondent was commonly known by the name "Electrolux-Medellin" prior to registration of the disputed domain name or that the Respondent is using the disputed domain name for a bona fide offering of its goods or services. In this regard, there are two particular matters that point to a lack of any legitimate right or interest of the Respondent to use the mark ELECTROLUX in the disputed domain name:
1. The fact that the mark ELECTROLUX is a well-known mark that is the subject of so many registrations worldwide, including Columbia, indicates that the Respondent must have known of this at the time of registration of the disputed domain name.
2. More importantly, the fact that the Respondent appears to be advertising services and repairs of Electrolux and Frigidaire products on the website linked to the disputed domain name, and is doing so without disclaimer of any authorization from the Complainant for this (Annex 10 to the Complaint), indicates that the use of the disputed domain name cannot be legitimate. While there can be no objection to the Respondent advertising on its website that it offers repairs for ELECTROLUX products (if this, indeed, is what it does), the use of the word ELECTROLUX in the disputed domain name suggests strongly that here is some official or authorized link with the Complainant for the purposes of repairs and services within the town of Medellin. This is clearly not the case.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) are made out, in that there is no material before it which points to the Respondent having a legitimate right or interest in the disputed domain name.
C. Registered and Used in Bad Faith
The matters discussed in relation to paragraph 4(a)(ii) of the Policy are also relevant to paragraph 4(a)(iii), which requires the Complainant to show that the disputed domain name has been registered and has been subsequently used in bad faith.
Paragraph 4(b) of the Policy then provides that 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 you [the Respondent] have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] 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."
It will be noted that, under paragraph 4(a)(iii) of the Policy, registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, textually, if not conceptually (i)-(iii) relate to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be non-exclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, the sub-paragraphs would also apply to a bad faith use of a disputed domain name after registration, with one of the purposes outlined in those paragraphs. Moreover, the clause precluding these four examples states that a finding as to any "shall be evidence of the registration and use of a domain name in bad faith" and does not purport to limit its scope. Support for this view is to be found in several UDRP decisions; see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
So far as the first of the circumstances referred to in sub-paragraph 4(b)(i) of the Policy is concerned, there is no evidence of the Respondent having registered or acquired the disputed domain name for the purposes indicated there (for resale to the complainant or a competitor for a consideration in excess of out of pocket expenses). The same applies with respect to the second circumstance outlined in sub-paragraph 4(b)(ii). However, there is sufficient material on the record for the Panel to make findings that the circumstances outlined in sub-paragraphs 4(b)(iii) and (iv) are present.
1. As noted above, given that the ELECTROLUX mark is well known and is the subject of so many registrations worldwide, including in Columbia, the Respondent must have known of this when it registered the disputed domain name. Thus, its registration was made in bad faith, and cannot have been for any purpose other than to disrupt the Complainant's business and/or to gain some other benefit through holding out an alleged association with the Complainant through the incorporation of its trade mark in the disputed domain name. The Panel notes here that there have been a series of previous Panel decisions (referred to in the Complaint) in which similar uses of the Complainant's trade mark in disputed domain names have likewise been held to have been made in in bad faith: see, for example, UDRP cases 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, D2010-1277; Aktiebolaget Electrolux v. Nomad Marketing, Ltd., WIPO Case No. D2010-1205; Aktiebolaget Electrolux v. Michael Dieckmann, WIPO Case No. D2010-1203).
2. The continuing use of the disputed domain name is clearly confusing to online users who will be attracted by the inclusion of the word ELECTROLX in the disputed domain name, and who will therefore believe that they are accessing a website that is in some way associated with or authorized by the Complainant. This is not the case, and the consumer confusion is further strengthened by the fact that there are services for Electrolux products advertised on the Respondent's website without any disclaimer of association with the Respondent.
The circumstances referred to in paragraph 4(b) are not exhaustive: as noted above, there may be other matters that also point to bad faith registration and use on the part of the Respondent. In this regard, the Panel takes note of the fact that the Respondent has used a privacy service and has not replied to letters of demand from the Complainant and has not filed a response in this proceeding as providing further evidence of its bad faith: see further Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Accordingly, the Panel is satisfied that there was both registration and subsequent use in bad faith of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy.
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 <electroluxmedellin.com> be transferred to the Complainant.
Date: June 11, 2014