WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Bui Trung Kiên
Case No. D2014-0951
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Bui Trung Kiên of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <baohanhdienmayelectrolux.com> is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 5, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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 sent an email communication, both in English and in Vietnamese, to the parties on June 18, 2014, on the language of the proceedings given that the concerned Registrar informed that the language of the registration agreement for the disputed domain name is Vietnamese. On the same date the Complainant replied requesting that English be the language of the proceedings. The Respondent did not reply to the communications sent by the Center. Given the submissions and circumstances of the case the Center decided, on June 26, 2014, to accept the Complaint as filed in English and to accept a Response either in English or Vietnamese.
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 June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 21, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 29, 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 Complainant is the owner of the trademark ELECTROLUX registered in Viet Nam under number 13319 (Annex 6 to the Complaint).
The Complainant is a Swedish joint stock company founded in 1901, today a world leading producer of home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year.
The ELECTROLUX trademark was ranked among the 2014 "Consumer Superbrands" list produced by the Centre for Brand Analysis and the Complainant was ranked along the 100 World's Most Reputable Companies in 2013 in the RepTrak 100 study conducted by the Reputation Institute (Annexes 10 A-B).
Currently no active website resolves from the disputed domain name.
5. Parties' Contentions
According to the Complainant, the disputed domain name reproduces its registered trademark and domain names in numerous countries (Annexes 6 and 9 to the Complaint), being confusingly similar to the ELECTROLUX trademark given that the addition of the prefixes "baohanh" and "dienmay" are not relevant and contribute to creating a link to the Complainant's products and services, what could mislead Internet users into believing that the disputed domain name is owned by the Complainant or by a related company.
Furthermore, "bào hành" which translated into English means "guarantee" and "điện máy" which in Vietnamese is used when referring to "electrical appliances" are terms fitted to creating an impression that the disputed domain name belongs to, or is affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name;
ii. no license or authorization of any kind has been given by the Complainant to the Respondent to use the ELECTROLUX trademark, the Respondent not being an authorized dealer of the Complainant's products nor has he ever been in a business relationship with the Complainant;
iii. the disputed domain name is being used in connection with a website offering repair and warranty services and technical support for the Complainant's products (Annex 11 to the Complaint), seeking to create an impression of association with the Complainant; and
iv. the Respondent did not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus conveying the false impression that the Respondent is an authorized reseller/service center for the Complainant's products, enhanced by the reproduction of the Complainant's ELECTROLUX logotype on the website.
In what relates to bad faith in registration and use of the disputed domain name, the Complainant asserts that the Respondent's knowledge of the Complainant's well-known trademark is evident given the reproduction of its logotype and products in the Respondent's website. The only possible conclusion that can be made is thus that the Respondent knew about the Complainant's trademark and reputation, and used them to its advantage in bad faith.
Furthermore, the Complainant tried to contact the Respondent on March 17, 2014, and requested the voluntary transfer of the disputed domain name and compensation for the expenses of the registration and transfer fees. Exchange of correspondence between the parties followed until April 1, 2014, but the Respondent did not transfer the disputed domain name to the Complainant (Annex 12).
Lastly, the Respondent, by using the disputed domain name, is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement with the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
Before turning to these questions, however, the Panel needs to address the issue of the language of the proceeding.
A. Language of the Proceeding
The Complainant made a request that the language of the proceeding be English in spite of the fact that the registration agreement is Vietnamese given that the correspondence exchange with the Respondent prior to the Complaint (Annex 12B) shows that the Respondent understands English to a certain extent. The Center accepted the Complaint to be filed in English with what the Panel agrees. Considering that the Respondent did not reply to any of the communications sent by the Center, both in English and in Vietnamese, this Panel reputes that translating the Complaint and its annexes into Vietnamese would create an unnecessary and unjustified burden on the Complainant, thus accepting the Complainant's request for English to be the language of this case.
B. Identical or Confusingly Similar
The Complainant has established its rights in the ELECTROLUX trademark.
In this Panel's view the prefixes "bào hành" which translated into English means "guarantee" and "đin máy" which in Vietnamese is used when referring to "electrical appliances" are easily associated with the Complainant since its ELECTROLUX trademark can be considered well-known in connection with home appliances and the repair services thereof, thus not sufficient to avoid a risk of undue association by the Complainant's customers or Internet users in general.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent's rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainant's statement that no authorization or license was granted for the use of the ELECTROLUX trademark in the disputed domain name corroborate with the indication of a lack of legitimate right in the disputed domain name.
The question then falls under whether legitimate interest could be found in view of the services being advertised through the disputed domain name, i.e., warranty or assistance services for house hold appliances.
According to the evidence submitted by the Complainant (Annex 11 to the Complaint – print-outs of the website that resolved from the disputed domain name) indeed no express disclaimer was made as to a lack of relationship between the parties. Furthermore, the reproduction of the Complainant's products and logotype, lead this Panel to the conclusion that the Respondent was seeking to create an impression of association with the Complainant, what does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant's trademark logotype in connection with the Complainant's products in the website that resolved from the disputed domain name.
The Respondent's use of the disputed domain name not only clearly indicates full knowledge of the Complainant's trademark but also an attempt of misleadingly diverting consumers for his own commercial gain.
For the reasons above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain name pursuant to 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 <baohanhdienmayelectrolux.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: August 12, 2014