WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Diana Virginina Rodríguez Cazorla, Govone Develops, S.L.
Case No. D2014-0940
1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Diana Virginina Rodríguez Cazorla, Govone Develops of Melilla, Spain.
2. The Domain Name and Registrar
The disputed domain names <electrolux-sat.com> and <reparoelectrolux.com> are registered with Soluciones Corporativas IP, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2014. On June 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 15, 2014.
The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on July 24, 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.
Complainant has requested that the language of these proceedings be English, the request is being made despite the fact that the Registrar has informed the Center that the language of the Registration Agreement is Spanish. Under the Rules pursuant to paragraph 11(a), the Panel has the authority to determine a different language other than the one of the Registration Agreement. In the present case, the Center requested Complainant (in both English and Spanish) to provide (alternatively), (1) satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or (2) submit the Complaint translated into Spanish; or (3) submit a request for English to be the language of the administrative proceedings. On June 12, 2014, Complainant confirmed its choice of English as language of the proceeding. Respondent did not reply to this request. The Center notified Respondent both in English and Spanish about these proceedings, Respondent opted not to reply to any of the communications, and opted not to receive the physical documents which were forwarded to it via courier. In the circumstances, the Panel finds no reason to deny Complainant's request that the proceedings be conducted in English, and so it is decided.
4. Factual Background
- Complainant is the owner of several trademarks including, but not limited to, ELECTROLUX. Complainant uses this and other trademarks to sell over 40 million items in 150 different countries around the world for appliances, kitchen and cleaning equipment.
Complainant has the trademark ELECTROLUX registered in more than 150 countries. Complainant has been in business since 1901 and the trademark was registered long before the disputed domain names were registered. ELECTROLUX is a well know trademark, has been ranked amongst the top brands in the world by specialized publications. Complainant operates several websites including "www.electrolux.com" which promotes its goods throughout the world.
- Respondent is apparently domiciled in Spain and registered the disputed domain names on February 2014, many years after Complainant registered its trademark.
Respondent operates two websites at the disputed domain names which offer technical service for Electrolux products, depicting pictures of what appear to be Electrolux branded appliances.
5. Parties' Contentions
Complainant has rights in ELECTROLUX by reason inter alia of its multiple registered trademarks dating well before registration of the disputed domain names. The disputed domain names are confusingly similar to this trademark. The addition of the Spanish word "reparo" which translates to "I Fix" or the suffix "sat-", do nothing to diminish that confusion.
Complainant has been using the trademark around the world for a number of years, having multiple registrations around the world, including in Spain where Respondent is domiciled. The disputed domain names are confusingly similar to Complainant's trademark ELECTROLUX.
Respondent registered the disputed domain names long after Complainant had well-established rights in the ELECTROLUX trademark. According to the evidence submitted before this Panel, Respondent registered the disputed domain names on February 2014 without Complainant's authorization.
Given the prominence of the ELECTROLUX trademark worldwide and on the Internet, Respondent's registration and use of the disputed domain names was done in bad faith.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
There is a consensus among UDRP panels that a respondent's default does not automatically result in a decision in favor of the complainant, complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"), paragraph 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a UDRP panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel has not found any exceptional circumstances to justify Respondents' failure to submit a Response. The Center contacted Respondent via emails, courier and notified the Registrar about these proceedings without getting any response from Respondent. In short, Respondent does not expressly deny any of the facts stated by Complainant and the Panel therefore infers that Respondent does not deny the reasonable facts asserted and contentions made by Complainant from these facts. See Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
With that being said, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that derive from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., Supra; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
A. Identical or Confusingly Similar
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Respondent registered the disputed domain names well after Complainant established rights in its ELECTROLUX trademark, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered the trademark in Spain and in over 150 countries around the world well before 2014 when the disputed domain names were registered. Complainant further evidenced its rights over the domain name <electrolux.com>.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, this is generally sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. In the Panel's view, if this is true as a general principle, it is even more so, when the disputed domain names wholly incorporates a famous and well-known trademark such as ELECTROLUX, the confusion is further enhanced by the choice of the Spanish word "reparo" which translates to "I Fix" in one of the disputed domain names in addition to the well-known trademark ELECTROLUX. The Panel has found no facts or arguments that could justify a dissent from the consensus view; therefore, consistent with previous UDRP panels, this Panel finds that the mere addition of a generic word such as "reparo" or a suffix like "sat", does not eliminate the confusing similarity between the disputed domain names and Complainant's ELECTROLUX trademark.
The Panel finds that the disputed domain names are confusingly similar to Complainant's ELECTROLUX trademark.
B. Rights or Legitimate Interests
Complainant has made its prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain names. Respondent failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized her use the ELECTROLUX trademark.
It is impossible for the Panel to establish a bona fide sale of goods or services in connection with the disputed domain names. The fact that Respondent did not file a Response forces the Panel to rely solely on the evidence submitted by Complainant. It appears from the documentation submitted before this Panel that Respondent has no license or permission to use the trademark. The Panel concurs with the prior UDRP panels holding that, in circumstances similar to this, there is no bona fide offering of goods or services where the disputed domain is being used to offer goods made by competitors. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, (a case of an authorized dealer) the panel held that, to be bona fide within paragraph 4(c)(i), the offering must meet several minimum requirements, including:
- Respondent must use the website to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods: Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use; Kanao v. J.W. Roberts Co., CPR Case No. 0109 (bait and switch is not legitimate); and
- the website must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official website if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001), (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official website.)
It is the view of this Panel that Complainant has satisfied its burden and provided the Panel with sufficient evidence to meet the prima facie requirement showing that Respondent has no rights to or legitimate interests in the disputed domain name. By defaulting the proceedings, Respondent has not provided the Panel with any evidence to demonstrate rights or legitimate interests in the disputed domain names as set forth in paragraph 4(c) of the Policy. Therefore, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names.See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. This holding is consistent with WIPO Overview 2.0, paragraph 2.1, pursuant to which "once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
For all of these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied by Complainant.
C. Registered and Used in Bad Faith
Complainant contents that Respondent is aware of the existence of the trademark ELECTROLUX, which is evident by the use of the logo and product images on both disputed domain names, and Respondent is offering products from multiple manufacturers including some of Complainant's main competitors. Complainant also contends that Respondent registered and is using the disputed domain names in bad faith by incorporating Complainant's registered ELECTROLUX trademark primarily to attract for commercial gain, Internet users to the websites at the disputed domain names by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship affiliation or endorsement.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)):
"(i) circumstances indicating that you 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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."
It is clear to this Panel that Respondent registered the disputed domain names primarily to attract for commercial gain Internet users benefiting from Complainant's fame and notoriety.
Absent some exceptional justification from Respondent, it is reasonable to infer that Respondent registered the disputed domain names with the primary intention of benefiting from Complainant's well-established trademark. This Panel believes this constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore concurs with previous UDRP panels holding that registration of a well-known trademark as a domain name by a third party may in certain circumstances be considered as further evidence of bad faith pursuant to the Policy (see PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. WIPO Case No. D2000-0163; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).
As previous UDRP panels have concluded the four criteria set forth in the Policy, paragraph 4(b), are nonexclusive (see Telstra Corporation Limited v. Nuclear Marshmallows, Supra). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
In this case, Respondent is using the entire trademark owned by Complainant without a plausible good faith explanation. This Panel can also infers a bad faith registration and use out of the evidence submitted by Complainant which leaves no doubt to this Panel that Respondent knew or must have known about Complainant's trademarks and it was out of the knowledge and the fame of Complainant's trademarks that it decided to register and use the disputed domain names.
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 names <electrolux-sat.com> and <reparoelectrolux.com> be transferred to the Complainant.
Date: August 6, 2014