WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Piotr Pardo
Case No. D2017-0368
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Piotr Pardo of Yeoville, South Africa.
2. The Domain Name and Registrar
The disputed domain name <electrolvx.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2017. On February 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 30, 2017.
The Center appointed Eric Gaum as the sole panelist in this matter on April 24, 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
Complainant owns numerous federally registered trademarks that wholly incorporate the mark ELECTROLUX, including, without limitation, International Trademark Registration 1126087 registered in 2012.
Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “electrolux”, for example, <electrolux.com> (created on April 30, 1996) and a South African registration <electrolux.co.za> (created on May 6, 1997).
This dispute concerns the domain name <electrolvx.com> registered on December 16, 2017. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Complainant, AB Electrolux, is a Swedish joint stock company founded in 1901 that produces appliances and equipment for kitchen and cleaning products and floor care products. The ELECTROLUX brand is Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. In 2014, Complainant had sales of SEK 112 billion and about 60,000 employees.
Complainant is the owner of the registered trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world including in South Africa. These trademark registrations predate the registration of the domain name <electrolvx.com>.
Complainant has registered a number of domain names in gTLDs and ccTLDs containing the term “electrolux”, for example, <electrolux.com> (created on April 30, 1996) and a South African registration <electrolux.co.za> (created on May 6, 1997). Complainant uses these domain names to connect to a website through which it informs potential customers about its ELECTROLUX mark and its products and services.
Complainant alleges that the domain name <electrolvx.com>, which was registered on December 16, 2017, directly and entirely incorporates Complainant’s well-known, registered trademark ELECTROLUX. The only difference between <electrolvx.com> and the ELECTROLUX trademark is the replacement of the letter “v” instead of “u”. Those two letters are visually close. The addition of the gTLD “.com” does not add any distinctiveness to the domain name.
Complainant contends that there is no bona fide offering of goods or services where the <electrolvx.com> domain name incorporates a trademark which is not owned by Respondent, nor is the Respondent known by the name “electrolux”. The legal entity displayed in the WhoIs is an individual named Piotr Pardo which is not similar to the domain name.
Complainant contends that the <electrolvx.com> domain name has been used in a sophisticated phishing scheme and more precisely in a spear phishing attack. Spear phishing, says the Complainant, is an email that appears to be from an individual or business that one knows, but it is not. Instead, the email is from the same criminal hackers who want the victim’s credit card and bank account numbers, passwords, and the financial information on its computer. Multiple phishing emails have been circulated to employees of Complainant. One example of that is an email in which the CFO of the Complainant was impersonated, requesting a wire transfer to one of its employees.
Complainant alleges that fake emails were distributed by Respondent and Respondent purported to be someone from Electrolux. Respondent intentionally chose the <electrolvx.com> domain name based on a registered and well-known trademark in order to use it for non-legitimate purposes by creating fraudulent email addresses phishing for funds from Complainant. Respondent has been cited in different decisions under the UDRP in connection to dubious activities relating to domain name registrations and there is a systematic bad faith behavior.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center forwarded the notification of Complaint to Respondent via email and the written notice of the proceeding via courier in accordance with the contact details found in the Complaint and in the appropriate WhoIs database confirmed by the Registrar. The Center also forwarded the notification of default to Respondent via email.
Based on the methods employed to provide Respondent with notice of the Complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of this proceeding. The Panel also finds that the failure of Respondent to submit a reply is not due to any omission by the Center.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present. As Respondent has failed to submit a response to the Complaint, the Panel may accept as true all of the allegations of the Complaint (see, Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Based upon the registered trademarks for ELECTROLUX and the continuous use of the mark, Complainant clearly has rights in the mark. The Panel agrees with Complainant that <electrolvx.com> is comprised entirely of Complainant’s registered ELECTROLUX mark with the only difference being the replacement of the letter “v” by the letter “u”, which are visually close. Complainant asserts, and the Panel agrees, that the disputed domain name <electrolvx.com> is confusingly similar to Complainant’s trademark ELECTROLUX.
The Panel finds that the disputed domain name <electrolvx.com> is confusingly similar to the trademark ELECTROLUX owned by Complainant pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has not licensed or authorized Respondent to use its trademark in any manner and there has never been any relationship between them.
There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the disputed domain name <electrolvx.com>.
The disputed domain name is inactive and the Panel does not find any use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair purpose.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name <electrolvx.com> pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists several circumstances, without limitation, that 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 you [respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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 website or location.
Respondent clearly registered and is using the disputed domain name in bad faith. Long after Complainant established its rights in its well-known trademark, Respondent acquired the disputed domain name and then engaged in creating fraudulent email addresses to use in a “phishing” scheme against Complainant even going so far as to impersonate the CFO and send a wire transfer request to an employee of Complainant.
It can be inferred that Respondent was aware of Complainant’s rights in its ELECTROLUX mark when Respondent acquired the disputed domain name, which incorporates the well-known ELECTROLUX mark. At a minimum, Respondent had constructive knowledge of Complainant’s marks due to its various trademark registrations.
The Panel finds that Respondent’s registration and use of the disputed domain name, with actual or constructive knowledge of Complainant’s trademark rights, and in connection with a fraudulent email scheme, establishes Respondent’s bad faith pursuant to 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, <electrolvx.com> be transferred to Complainant.
R. Eric Gaum
Date: May 8, 2017