WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Duong Van Tho
Case No. D2014-1642
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Duong Van Tho of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <trungtambaohanhelectrolux24h.com> is registered with P.A. Viet Nam Company Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center”) on September 23, 2014. On September 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 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. On September 30, 2014 the Center also transmitted an email to the Parties in both English and Vietnamese regarding the language of the proceedings. On the same date, the Complainant requested the language of the proceedings to be English. The Respondent was invited to comment on the Complainant request for English to be the language of the proceedings by October 5, 2014. The Respondent did not submit any comment in relation to the language of the proceedings.
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 in both English and Vietnamese, and the proceedings commenced on October 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2014.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 14, 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.
The language of the registration agreement is Vietnamese. The Complainant made a request that the language of the proceeding be English in spite of the fact that the registration agreement is Vietnamese. The Center accepted the Complaint to be filed in English with which the Panel agrees. The Respondent did not reply to any of the communications sent by the Center, both in English and in Vietnamese.
4. Factual Background
The Complainant, AB Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919 and is a world leading producer of appliances and equipment for kitchen and cleaning. Complainant is also one of the largest producers in the world of similar equipment for professional users. Electrolux, which trades under the brand ELECTROLUX as well as under other brands, sells 40 million products to consumers living in 150 different countries every year. In addition, the Complainant is the market leader in many of the individual product categories in which they compete.
ELECTROLUX is included in the “Superbrands 2014” list and was ranked number 46 on the RepTrak™100: The World’s Most Reputable Companies’ list for 2013.
The Complainant has registered the trademarks ELECTROLUX as word and figure marks in several classes in more than 150 countries all over the world, including in Viet Nam.
The trademark ELECTROLUX was registered long before the registration of the disputed domain name.
The Complainant has also registered domain names incorporating the trademark ELECTROLUX under almost 700 generic Top Level Domains (“gTLDs”) and country code Top level Domains (“ccTLDs”) worldwide, among these <electrolux.com.
The disputed domain name < trungtambaohanhelectrolux24h.com> was registered on March 8, 2014.
The disputed domain name is connected to a web site offering repair services for, allegedly, ELECTROLUX products.
5. Parties’ Contentions
The Complainant claims that the ELECTROLUX trademark is a well-known trademark with strong reputation, that the disputed domain name is confusingly similar to the Complainant’s renowned ELECTROLUX registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Vietnamese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes.
The Complainant has requested that English be the language of the proceeding, for the following reasons:
1. The fact that the Respondent on receipt of a cease and desist letter written in English did not reply to same, at least to declare that he did not understand English, is inference that he does understand it;
2. The Complainant is not familiar with the Vietnamese language, thus to proceed in Vietnamese will involve further costs and delay the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to decide in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Owing to the evidence filed by the Complainant, its request for English to be the language of the proceeding and the fact that the Respondent did not reply to any of the communications sent by the center, though they were written both in English and in Vietnamese, the Panel, also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner, determines English to be the language of the proceeding.
A. Identical or Confusingly Similar
The Complainant has argued that ELECTROLUX is an extremely well known trademark and forms the dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional words “trungtam baohan” and the suffix “24h” in the disputed domain name are not dominants, being merely generic and descriptive terms. Where “trungtam” means “center” in Vietnamese, “bào hành“ is the Vietnamese term for “guarantee” and “24h” most likely refers to “service 24 hours a day”.
This Panel agrees with the Complainant’s contention that “Electrolux” is the only distinctive part within the disputed domain name and that the addition of the generic terms does not avoid the confusing similarity between the disputed domain name and Complainant’s trademark ELECTROLUX. Indeed, it is now well established by many previous UDRP decisions that the addition of generic terms to a trademark is generally not sufficient to avoid confusing similarity.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark ELECTROLUX in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case. The Respondent has no connection or affiliation with the Complainant that has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C. below. In addition, the Respondent does not appear to be commonly known by the name “Electrolux” or by a similar name. Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent registered the disputed domain name aware of the Complainant’s trademark registrations and rights to the ELECTROLUX mark.
In fact, considering that the Complainant’s trademark is a renowned trademark that has been registered and used for decades and thus long predates the disputed domain name’s registration, that the disputed domain name is connected to a web site offering repair services for allegedly ELECTROLUX products, and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant’s products and trademarks and deliberately intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name; and that the use of the disputed domain name, i.e., to run a website offering repair services for allegedly ELECTROLUX products, falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: “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.”
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant’s cease and desist letter. Indeed, due to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this administrative proceeding, it is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 <trungtambaohanhelectrolux24h.com> be transferred to the Complainant.
Date: November 25, 2014