WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Ong Dao Van Tien
Case No. D2017-0330
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Ong Dao Van Tien of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <elektroluxvn.net> 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 February 20, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2017, 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 Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Vietnamese. On February 22, 2017, the Center sent a language of proceeding communication in both Vietnamese and English to the Parties. On the same date, the Complainant confirmed its request for English to be the language of proceeding already included in the Complaint. The Respondent did not reply to the Center’s notification or the Complainant’s confirmation.
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 February 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 3, 2017. 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
AB Electrolux (hereinafter referred to as the Complainant), is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products.
The ELECTROLUX brand is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. In 2014, the Complainant had sales of SEK 112 billion and about 60,000 employees.
The Complainant is the owner of the registered and well-known trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world including in Viet Nam, that has been designated inter alia in the following international registrations under the Madrid System: registration no. 836605 registered on March 17, 2004 and registration no. 1260775 registered on January 27, 2015 both for the mark ELECTROLUX.
The Complainant has a strong business presence in Viet Nam, where the Respondent is located, through its own business unit, just as the Complainant operates the website “www.electrolux.vn”.
According to publicly available records, and as confirmed by the Registrar, the disputed domain name <electroluxvn.net> was registered on September 28, 2016. The disputed domain name resolves to a website through which the Respondent appears to offer repair and maintenance services for ELECTROLUX products.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to its well-known ELECTROLUX mark, since the disputed domain name incorporates the Complainant’s mark in its entirety. The Complainant further submits that the mere addition of the geographic indicator “vn” does not differentiate the disputed domain name from the registered trademark. Also, the inclusion of geographical terms and the generic Top-Level Domain (“gTLD”) “.com” are usually disregarded for purposes of this assessment of confusing similarity under the first element of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed to use the Complainant’s ELECTROLUX mark and is not operating an authorized repair and maintenance center. In that regard, the Complainant explains that its authorized distributors are contractually prohibited from registering and using domain names that incorporates the Complainant’s mark. The Complainant further states that the Respondent’s incorporation of the Complainant’s ELECTROLUX mark in the disputed domain name and the prominent website display of the Complainant’s ELECTROLUX mark and logo, strongly suggests an official or authorized relationship with the Complainant for purposes of providing repairs and maintenance services in Viet Nam.
The Complainant maintains that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the Respondent clearly knew of the Complainant’s mark when registering the disputed domain name. The Complainant argues that the Respondent has failed to satisfy the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 because: (1) the Respondent has not provided a disclaimer on the website; (2) the Respondent is depriving the Complainant of reflecting its own mark in a domain name; and (3) the Respondent presents itself as the Complainant by using the ELECTROLUX trademark and logo on the website.
The Complainant argues that the Respondent’s use of the disputed domain name with the website creates the false impression that the Respondent either is or is affiliated with the Complainant. The Complainant further argues that the Respondent cannot claim prior relevant rights in the disputed domain name, or to have been commonly known by the disputed domain name, or to be making a legitimate noncommercial use of the disputed domain name.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Respondent is thus using the disputed domain name intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website. The Complainant asserts that such consumer confusion is increased by the prominent display of the Complainant’s ELECTROLUX mark and logo on the Respondent’s website and lack of disclaimer, which suggests either that the Respondent is the trademark owner or that the website is an official site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Although the language of the Registration Agreement is Vietnamese, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English. The Panel finds that it would be inappropriate to conduct the proceeding in Vietnamese and request a Vietnamese translation of the Complaint while the Respondent has failed to raise any objection by replying to the Center’s notification regarding the language of the proceedings or to the Complainant’s confirmation of its request for English, or even to respond to the Complaint even though the Respondent was notified of this proceeding by the Center both in Vietnamese and in English.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name consists of “electrolux” with the addition of the common abbreviation for the Respondent’s country of residence Viet Nam, namely “vn”. The element “electrolux” is identical to the Complainant’s mark. In the Panel’s view, the addition a geographical term is usually not enough to avoid the confusing similarity and the gTLD denomination “.net” is typically disregarded when assessing the confusing similarity of domain names and trademarks.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Respondent is using the disputed domain name for a website that appears to offer repair and maintenance services related to the Complainant’s products. According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Panel recognizes that there may be some limited situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. As it is stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3:
“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 trademark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>).
Furthermore: A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a rightto use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark”.
This Panel takes the view that without express authority of the Complainant, a right to resell, distribute or offer repair and maintenance services related to the Complainant’s products does not create a right to use a domain name that is confusingly similar to the relevant trademark. In this case, the Respondent is not an authorized repair center of the Complainant’s products. In any event, even if the Panel were inclined to follow the consensus view, including in cases of unauthorized resellers or distributors, the Respondent did not meet the requirements under the Oki Data principles for the reasons pointed out by the Complainant in the Complaint.
In the circumstances present here, the Respondent’s registration and use of the disputed domain name indicates its lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) of the Policy lists, by way of examples, the kind of circumstances that evidence the same.
Based on the provided information, the Complainant’s trademark ELECTROLUX can be characterized as a well-known trademark in Viet Nam particularly as it relates to household appliances, and it is clear from the content of the corresponding website that the Respondent was well aware of the Complainant and of the Complainant’s mark when it registered the disputed domain name.
As explained above the disputed domain name has been used for a website at “www.electroluxvn.net” on which the Respondent appears to offer repair and maintenance services for ELECTROLUX products. It is thus evident that the use of the name “Electrolux” refers to the specific products originally manufactured and sold by the Complainant and that this use is capable of giving the Internet user the impression that the Respondent and its website is somehow endorsed by or affiliated with the Complainant. See paragraph 4(b)(iv) of the Policy.
Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraphs 4(a)(iii) and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain name according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested the Panel that the disputed domain name be transferred to it.
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 <electroluxvn.net> be transferred to the Complainant.
Date: April 21, 2017