WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. David Alejandro Romero Castro
Case No. D2015-0343
1. The Parties
1.1 The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
1.2 The Respondent is David Alejandro Romero Castro of Bogota, Colombia.
2. The Domain Names and Registrar
2.1 The disputed domain names <electroluxagenciadeservicio.com> and <electroluxcertificado.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, 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.
3.2 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”).
3.3 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 March 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015. On March 24, 2015 the Center sent to the parties a Notification of Respondent Default.
3.4 The Complainant requested the suspension of the proceeding on March 25, 2015. The Complainant requested the re-institution of these proceedings on April 23, 2015.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 13, 2015. 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
4.1 The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. It manufactures domestic electrical appliances and equipment under various brand names, one of which is ELECTROLUX. Its products are sold in 150 countries including in Colombia. It has 60,800 employees and in 2013 its sales amounted to SEK 109 billion. ELECTROLUX was listed in the “Superbrands 2014” list in respect of “Household Appliances”.
4.2 The Complainant is the owner of numerous registered trade marks around the world that comprise or incorporate the term “Electrolux”. These include:
(i) Community Trade Mark no 77925 for the word mark ELECTROLUX registered on September 16, 1998 in classes 3, 7, 8, 9, 11, 16, 20, 21, 35 and 37.
(ii) International trade mark no 1182758 registered on October 10, 2013 in class 28 designating various countries including Columbia, which takes the following form:
(iii) International trade mark no 854121 registered on October 8, 2004 in classes 7, 11, 16, 21, 35, 37 and 39 designating various countries (not including Columbia), which takes the following form:
4.3 The Respondent appears to be an individual located in Columbia.
4.4 The Domain Names were registered on October 9, 2014. Since that date the Domain Names have been used for websites that appear to offer home service and repairs for ELECTROLUX branded products.
4.5 On December 9, 2014 the Complainant’s representatives sent a letter in English to the Respondent claiming that the Respondent’s “keeping” of the Domain Names, infringed the Complainant’s trade mark rights and demanding that the Respondent transfer the Domain Names to the Complainant. It would appear that the Respondent did not respond to that letter.
4.6 As at the date of the decision no website appears to be operating from either of the Domain Names.
5. Parties’ Contentions
5.1 The Complainant refers to its registered trade marks and notes that the Domain Names comprise the ELECTROLUX mark in combination with the terms “certificado” and “agencia de servicio” and the “.com” Top-Level Domain (“TLD”). These additional terms are said to be non-distinctive elements that do not distinguish the Domain Names from the Complainant’s marks. It is claimed that as a consequence the Domain Names are confusingly similar to the Complainant’s marks.
5.2 The Complainant maintains that the Respondent does not have any registered trade marks that correspond to the Domain Names. Further, although the Respondent appears to be using websites operating from the Domain Names to offer repair services and technical support for the Complainant’s products, such activity has not been authorised by the Complainant. The Complainant also complains that the websites operating from the Domain Names do not contain disclaimers making it clear that the Respondent is not connected with or authorised by the Complainant and that one of the websites carries a link to another website (operating from the domain name <serviplusenbogotaycundinamarca.com>), on which repair services for several brands, such as LG and Samsung, are offered.
5.3. In this respect the Complainant contends that the websites operating from the Domain Names do not fall within the “safe harbours” for use of another’s trade mark said to be laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
5.4 The Complainant further contends that it is obvious that the Respondent was aware of the Complainant’s trade marks at the time that the Domain Names were registered and that the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites operating from the Domain Names. Accordingly, it is claimed that the Domain Names were registered and are being used in bad faith.
5.5 Although the Respondent has sent a number of emails to the Center, no formal response has been filed in these proceedings. None of the Respondent’s informal emails addressed the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute notwithstanding the fact that no formal Response has been lodged.
6.2 Where no Response is filed, the Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Names can only be sensibly understood as the Complainant’s ELECTROLUX trade marks (at least one of which is a word mark) in combination with the Spanish words “certificado” and “agencia de servicio” and the “.com” TLD. It further accepts that these additions do not serve to distinguish the Domain Names from the Complainant’s marks. In the circumstances, the Panel holds that the Domain Names are “confusingly similar” (as that term is understood under the Policy) to the Complainant’s trade marks and that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 There appears to be no dispute that the Domain Names have been used for websites that promote a business that provides various services in relation to the Complainant’s products. Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]”
6.6 The “requirements” and “principles” recorded in the first part of this paragraph were first suggested in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
6.7 Here the Respondent appears not to be a reseller or distributor of the Complaint’s products, but the provider of repair services and technical support in relation to those products. However, there appears to be no logical reason why the analysis in such a case should be any different, particularly, where as here the words added to the mark in the domain name (in this case the Spanish words for “certified” and “service agency”) indicate that some form of service in relation to those products is being offered.
6.8 The Panel accepts the Complainant’s contention that each of the websites operating from the Domain Names does not adequately disclose who is behind that website and the nature of that person’s relationship (if any) with the Complainant. That is sufficient to justify a finding of lack of rights or legitimate interests in this case.
6.9 The Panel is also prepared to accept the Complainant’s claim (in the absence of any argument or evidence to the contrary) that in the case of the Domain Name <electroluxcertificado.com> the additional word “certificado” is likely to signal to an Internet user that the owner of the Domain Name and operator of the website operating from it is an official service provider of the Complainant’s products. According to the Complainant this is not true. Accordingly, so far as this Domain Name is concerned, this is a case of impermissible impersonation either of the Complainant or one of the Complainant’s certified service providers.
6.10 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 The Panel accepts the Complainant’s claim that the Respondent must have known of the Complainant’s marks (in the sense that it knew the term was being used as a trade mark in connection with the Complainant’s goods and services) at the time that the Domain Names were registered. This is apparent both from the Domain Names themselves that can only be sensible read as including references to the Complainant’s goods and services, and the uses to which the Domain Names have been put after registration.
6.12 Further, given the findings of the Panel in relation to rights and legitimate interests it follows that the registrations were made and the Domain Names have been used in bad faith. In particular, the Domain Names have been registered and used to draw Internet users to websites which offer services in connection with the Complainant’s products in competition to the Complainant (or its authorised dealers) in circumstances where the website operator does not sufficiently identify the nature of the relationship of the website operator with the Complainant. In the case of <electroluxcertificado.com> Domain Name there is also the fact that the Domain Name signals to the Internet user that it is an official service provider of the Complainant’s products, when it is not. Accordingly, the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy1 .
6.13 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <electroluxagenciadeservicio.com> and <electroluxcertificado.com> be transferred to the Complainant.
Matthew S. Harris
Date: May 14, 2015
1 In the overall circumstances of this case, the fact that the Domain Names no longer resolve to active websites as at the date of the decision does not alter the Panel’s finding of bad faith use.