WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Darcivan Petrucci, consertoelectrolux.com
Case No. D2015-2258
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Darcivan Petrucci, consertoelectrolux.com of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <consertoelectrolux.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2015. On December 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2016.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on January 15, 2016. 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 AB Electrolux, a Swedish company, founded in 1901, well known in several countries for its home and professional appliances and with distinctive reputation.
The Complainant owns the trademark ELECTROLUX, as a word and figure mark in several classes, and specifically in Brazil it is registered since 1930. In this country, the Complainant started producing its products in 1950 and afterwards acquired the local second-largest white goods manufacturer, becoming Electrolux do Brazil and significantly strengthening its position on the market.
Nowadays, the Complainant has a strong business presence in Brazil through its wholly owned subsidiary Electrolux do Brasil S.A. and also through its official licensing partners and service desks.
Due to common misunderstandings of the repair centers on the use of the trademark on their own domain names, the Complainant signs an agreement with its licensee’s/distributors that stipulates they are not entitled to register domain names incorporating the Complainant’s trademark.
The domain name <electrolux.com.br> was registered by the Complainant in 1996 and it currently hosts the Complainant’s local official website in Brazil. The Complainant also owns other domain names under generic Top-Level Domains (“gTLDs”) and country-code Top-Level domains (“ccTLDs”) containing the trademark ELECTROLUX, that are used for connecting to websites displaying information on the Complainant’s marks, products and services.
The Respondent registered the disputed domain name <consertoelectrolux.com> on April 11, 2015.
The disputed domain name <consertoelectrolux.com> includes the trademark ELECTROLUX in its entirety and adds the generic term “conserto”, which in English means “repair”, and the gTLD “.com”. It directs to a website that displays the official ELECTROLUX logo on the upper right corner of the website and in order to request for assistance and/or repair invites Internet users to fill in their personal details, such as name, email, telephone.
The Complainant tried to solve this matter amicably, sending a cease and desist letter and then a reminder, but no communication was received from the Respondent.
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to the ELECTROLUX trademark, owned by the Complainant. The Complainant argues that the disputed domain name incorporates its trademark ELECTROLUX in its entirety and that the addition of the term “conserto” (i.e., “repair”), along with the trademark name, strengthens the impression that the Respondent is somehow related to the Complainant. Additionally, the use of the stylized blue color logo on the Respondent’s website supports that the Respondent would like to come across as the Complainant. The Complainant argues that the Respondent clearly intends to give the impression of being an official or authorized repair center of the Complainant, thus doing business with the Complainant’s brand name. The mere addition of the gTLD “.com” does not add any distinctiveness.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services. The Complainant rises the hypothesis of this case being a common misunderstand of repair centers, despite being authorized or not, that consist in the idea they can freely register a domain name incorporating the trademark in its entirety. However, to prevent this from happening with authorized partners, the Complainant signs an agreement that clearly states that using its trademark on any domain name is strictly forbidden. So, even if this was the case of this common misunderstanding, not only the Respondent would have signed the agreement but would also be dishonoring it. Along with this hypothesis, supposing the Respondent could be an authorized or non-authorized third party using a trademark as a domain name, the Complainant quotes Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, but again, the Respondent does not meet all the Oki Data criteria.
The disputed domain name was registered by the Respondent in 2015, which turns undeniable that the Respondent was aware of the Complainant’s rights on the trademark ELECTROLUX prior to the acquisition of the disputed domain name. The Complainant further argues that collecting Internet users’ personal details such as name, telephone number, email address, etc., as a potentially phishing scheme is not a bona fide offering of goods and services. Finally, the Respondent was given the opportunity to claim its rights and he did not.
3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant argues that several facts strongly suggest bad faith. As mentioned above, the date of registration turns it highly unlikely that the Respondent was not aware of the Complainant’s rights on the trademark ELECTROLUX and, therefore, that the registration of the disputed domain name was in bad faith. Moreover, the Complainant had tried to solve the matter amicably and the Respondent disregarded the communications sent, which were clearly mentioning the unauthorized use of the Complainant’s trademarks. The unauthorized use of the Complainant’s logo on the website under the disputed domain name intentionally gives the false impression to the Internet users of a strong relation with the Complainant. This strongly suggests the intention of attracting visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or a product or service on the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. There are therefore two conditions in paragraph 4(a)(i) that the Complainant must meet: First, that it has “rights in a trade or service mark”, and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
The Complainant is the owner of the trademark ELECTROLUX, widely known, and registered in Brazil since 1930. Its official website in Brazil is hosted under the domain name <electrolux.com.br>, registered in 1996.
The addition of the term “conserto”, a term referring to a service commonly associated to the Complainant’s products and services, actually strengthens the confusing similarity between the disputed domain name and the Complainant’s trademark. Additionally, the Panel shares the view of the panel in OLX, B.V. v. Kumud, G. / Whois Agent, Whois Privacy Protection Service, Inc. WIPO Case No. D2015-0218 as “by using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and fame of the trademark, for its own commercial gain”.
Adding to this the fact that the website at the disputed domain name displays the Complainant’s logo, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
As previously mentioned in Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services, WIPO Case No. D2008-1907 the addition of the suffix “.com” is for registration purposes only, being a technical requirement of registration of a domain name, and does not serve as a distinguishing feature for trademark purposes of paragraph 4(a)(i) of the Policy.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name to the panel. The Complainant has provided evidence to show that the website at the disputed domain name is being used to promote or offer technical assistance for Elctrolux in some districts in Brazil. As also noted below, there is no disclaimer on the website at the disputed domain name, so that the site doesn’t disclose the Respondent’s relationship with the Complainant.
The Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel finds that it is not plausible that the Respondent was not aware of the Complainant’s trademark at the time it registered the disputed domain name, given that ELECTROLUX is a widely known trademark with a strong presence in Brazil’s market for decades.
The Respondent has demonstrated a knowledge of and familiarity with the Complainant’s business and brand, seeking, through the website at the disputed domain name, to pass itself off as the Complainant. The Panel finds that the improper use of the Complainant’s logo on the Respondent’s website also contributes to confuse the Internet users and thus indicates bad faith.
Adding to this the fact that the Respondent offers specific services of repair of the Complainant’s products and requests personal details of Internet users, the Panel finds that there is an evident attempt to trade on the Complainant’s trademark. As stated in Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon, WIPO Case No. D2014-0487, the consumer confusion is further strengthened by the fact that there are services for Electrolux products advertised on the Respondent’s website without any disclaimer of association with the Complainant.
Following previous UDRP panel decisions, bad faith exists where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith” (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
This panel finds the current case to have such an obvious connection between the disputed domain name and the widely known trademark ELECTROLUX.
Therefore, the Panel finds that the third element of the Policy has been satisfied.
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 <consertoelectrolux.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: January 28, 2016