WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Nguyen Van Dien
Case No. D2014-0490
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Nguyen Van Dien of Hai Duong, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <baohanhelectrolux.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 confirming that the Respondent is listed as the registrant and providing the contact details.
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 April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 24, 2014.
The Center appointed Syed Naqiz Shahabuddin 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
The following summary set out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is the owner of the ELECTROLUX trademark.
4.2 The ELECTROLUX trademark is registered as a word and device mark in several classes in more than 150 countries worldwide, including Vietnam under the registration numbers 13319 and 63104.
4.3 The ELECTROLUX trademark is also registered as a domain name under almost 700 generic Top-Level Domains ("gTLD") and country-code Top Level Domains ("ccTLD") worldwide, including <electrolux.com> and <electrolux.vn>.
4.4 The Electrolux brand was included in the "Superbrands 2014" list and was placed as number 46 on the RepTrakTM list 100: The World's Most Reputable Companies' list for 2013.
4.5 The Complainant and the Electrolux brand is one of the leading producers of appliances and equipment for kitchen and cleaning. In 2013, the Complainant recorded sales of Swedish Krona SEK 109 Billion and employed more than 60,800 employees. Its products are sold in 150 different countries every year.
5. Parties' Contentions
5.1 The Complainant asserts that ELECTROLUX is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant's ELECTROLUX trademark for the following reasons:
(a) the disputed domain name comprises the Complainant's ELECTROLUX trademark as its dominant feature.
(b) the inclusion of the top-level domain (gTLD) "net" is inconsequential when determining similarities between domain names and trademarks.
(c) the addition of the suffix "baohanh" does not detract from the overall impression formed by the public that the disputed domain name is owned by or related to the Complainant.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Respondent has not adduced any evidence to indicate the Respondent's rights to the disputed domain name.
(b) the Respondent is not, in any way, related to the Complainant's business, is not one of its agents and does not carry out any activity or has any business with the Complainant. The Complainant has not licensed or authorised the Respondent in any way including to register or to use the disputed domain name.
(c) the disputed domain name is being used by the Respondent solely for commercial gain as it resolves to a website which offers services for ELECTROLUX branded products when it is not an authorised service provider of the Complainant's products.
(d) the Respondent was aware of the Complainant's rights to the ELECTROLUX trademark at the point of registration of the disputed domain name given that ELECTROLUX is a well-known mark and that the Respondent was the same Respondent in Aktiebolaget Electrolux v. Nguyen Van Dien, WIPO Case No. D2013-1258, concerning the almost identical domain name <baohanhelectrolux.com> and involving the same parties.
5.3 The Complainant further contends that the Respondent registered and/or used the domain name in dispute in bad faith and relies on the following:
(a) the Complainant has not found any evidence to suggest that the Respondent has any legitimate rights or interests to the trademark ELECTROLUX including any licences or authorisations from the Complainant.
(b) the ELECTROLUX trademark is a well-known mark and the Respondent was the same Respondent in Aktiebolaget Electrolux v. Nguyen Van Dien, WIPO Case No. D2013-1258, concerning the almost identical domain name <baohanhelectrolux.com>.
(c) the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as the source, sponsorship, affiliation or endorsement of its website.
(d) the Respondent is not using the domain name in connection with a bona fide offering of goods and services but is instead seeking to ride and usurp the Complainant's reputation and goodwill in the ELECTROLUX trademark. The disputed domain name will cause confusion and divert Internet users away from the Complainant's official website in Vietnam.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark ELECTROLUX. The ELECTROLUX trademark is a well-known and reputable mark registered by the Complainant in numerous jurisdictions and used extensively on a worldwide basis. This has also been confirmed by several URDP decisions (see AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777).
The disputed domain name comprises of the Complainant's ELECTROLUX trademark in its entirety with the additional suffix "baohanh", which the Complainant explains to be the Vietnamese translation for the word "warranty". The addition of this descriptive word does not detract one's attention from the distinctive feature of the disputed domain name, which is ELECTROLUX. On the contrary, it could be understood by someone to mean that the domain name resolves to an authorised site for after sales activities concerning ELECTROLUX products.
As such the Panel finds that the disputed domain name is confusingly similar to the Complainant's ELECTROLUX trademark for the purposes of the Policy.
B. Rights or Legitimate Interests
The Complainant's assertions have not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence put forward by the Respondent to indicate that the Respondent was licensed or authorized by the Complainant to use the ELECTROLUX trademark.
The Complainant has adduced sufficient evidence that the disputed domain name is being used by the Respondent solely for commercial gain. The disputed domain name resolves to a website located at "www.baohanhelectrolux.net" which offers services for ELECTROLUX branded products. The Complainant asserts that the Respondent is not an authorized service provider of the Complainant's products and has never had a business relationship with the Complainant. Therefore, by operating such a website under the disputed domain name, the Respondent is in effect creating a false impression or is likely to create such a false impression that the Respondent is an authorized service center for the Complainant's products without express authority of the Complainant.
In the circumstances, the Panel cannot find any justification, right or legitimate interest on the part of the Respondent to the words comprising the disputed domain name or to the disputed domain name itself. Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant's rights to the ELECTROLUX trademark when it registered and started using the disputed domain name.
The factors that were taken into account to arrive at this conclusion include:
(a) the date of registration of the disputed domain name which was on November 8, 2013 and which occurred after the panel in Aktiebolaget Electrolux v. Nguyen Van Dien, WIPO Case No. D2013-1258, ordered a transfer of the domain name <baohanhelectrolux.com> on August 26, 2013 to the Complainant.
(b) the notoriety of the trademark through the widespread and long use of the ELECTROLUX trademark by the Complainant at a global level.
(c) the fact that the disputed domain name resolved to a website that, although in the Vietnamese language, included the reference to the ELECTROLUX trademark and logo.
The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent is using the domain name in dispute to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website.
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) 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 <baohanhelectrolux.net> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: May 28, 2014