WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Elio Junior, El-Electrolux
Case No. D2018-0553
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Elio Junior, El-Electrolux of Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <el-electrolux.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2018. On March 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2018, 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 March 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2018.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on April 23, 2018. 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 a Swedish joint stock company founded in 1901. It is a global leader in household appliances and appliances for professional use, selling more than 60 million products to customers in more than 150 markets every year. Its products are sold under, inter alia, the well-known brands Electrolux, Zanussi, AEG, and Frigidaire.
The Complainant has registered the trademark ELECTROLUX in several classes in more than 150 jurisdictions, including Sweden and Brazil, where the Respondent is located. Among these, the Complainant cites details and provides evidence of the following trademarks:
- ELECTROLUX (figurative mark), International trademark registration No. 836605, registered on March 17, 2004, covering goods in classes 3, 7, 8, 9, 11, 12, 21, 25, designating several countries worldwide;
- ELECTROLUX (word mark), European Union trademark registration No. 77925, filed on April 1, 1996 and registered on September 16, 1998, covering goods in classes 3, 7, 8, 9, 11, 16, 20, 21, 35 and 37;
- ELECTROLUX (word mark), Brazilian registration No. 002521261, filed on August 30, 1960 and registered on August 30, 1970;
- ELECTROLUX (word mark), Brazilian registration No. 002625920, filed and registered on August 30, 1949.
The Complainant is also the owner of various domain names consisting of, or containing, the trademark ELECTROLUX, such as <electrolux.com> and <electrolux.com.br> (both created in 1996), and <electrolux-aeg.com> (created in 2007). These domain names lead to the Complainant’s website, containing information on the ELECTROLUX goods and services.
The disputed domain name <el-electrolux.com> was registered on November 24, 2016, and resolves to a website offering maintenance services for the Complainant’s website.
5. Parties’ Contentions
The Complainant maintains that the disputed domain name is confusingly similar to its ELECTROLUX trademark since it fully reproduces its trademark preceded by the defined article “el”, which is insufficient to avoid confusing similarity.
The Complainant asserts that the Respondent is not affiliated with the Complainant and that the Complainant never authorized the Respondent to reflect its trademark in the disputed domain name. Furthermore, the Respondent is not commonly known as “El-Electrolux” and/or by the disputed domain name <el-electrolux.com>.
The disputed domain name links to a website prominently displaying the Complainant’s trademark and official logo ELECTROLUX, as well as the Complainant’s products, combined with the wording “Electrolux Technical Assistance” written in Portuguese. Therefore, the Respondent is using the disputed domain name to offer technical support services for home appliances of the Complainant’s brand, as such creating the false impression of an affiliation or relationship with the Complainant.
Although the website corresponding to the disputed domain name contains a disclaimer stating that the Respondent is not part of the Complainant’s authorized network, the disclaimer is hardly visible as it is written in small characters between the lines of a wider text and is placed on a secondary page of the website.
Therefore, the Respondent is not using the disputed domain name in connection with a bona fide offering of services, but to misleadingly divert consumers for commercial gain.
According to the Complainant, the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that due to its longstanding and widespread use, ELECTROLUX has achieved the status of well-known trademark. The Respondent could not ignore the existence of the ELECTROLUX trademark at the time it registered the disputed domain name, many years after the registration of the Complainant’s well-known trademark. From the contents of the Respondent’s website, it is undeniable that the Respondent knew of the Complainant’s trademark and activity. The design of the website linked to the disputed domain name and the prominent use of the ELECTROLUX trademark followed by the wording “Electrolux Technical Assistance” in Portuguese, show that the Respondent intends to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent is taking undue advantage of the reputation of the Complainant’s trademark by causing confusion among the Complainant’s clients.
The disclaimer clarifying that the Respondent is not part of the Complainant’s technical assistance network is not clearly visible and is therefore insufficient to prove that the Respondent is using the disputed domain name in connection with a bona fide offering of services. Furthermore, the existence of a disclaimer is not sufficient to cure bad faith if bad faith has been established by other factors. In this respect, the Complainant points out that the disputed domain name was registered to create initial confusion among consumers, attracting people to the Respondent’s website instead of the Complainant’s website.
In June 2017, the Complainant sent a letter via email to the Respondent asking whether it had been authorized to register the disputed domain name and if so, by whom. In its letter, the Complainant also pointed out that “all domain names that [were] related to AB Electrolux should be centralized to their domain name portfolio, and the owner of the domain names should be AB Electrolux”. The Respondent did not reply to the Complainant’s letter and to a subsequent reminder.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, in order to succeed in a UDRP proceeding, the Complainant must first prove that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
The Complainant has proved that it is the owner of many ELECTROLUX trademarks predating the disputed domain name, some of which extend their protection to Brazil, which is the country where the Respondent is located.
The disputed domain name fully reproduces the Complainant’s trademark preceded by the two letters “el” followed by a hyphen. These two elements are insufficient to avoid a confusing similarity with the Complainant’s trademark. In viewing the disputed domain name, Internet users could perceive the two letters “el” in several different ways: as the defined article “the” in Spanish or in Portuguese (where, however, it is nowadays very seldom used); as an abbreviation of the personal name Elio, which is the Respondent’s name according to the relevant WhoIs (or as his nickname); as an abbreviation of the trademark ELECTROLUX; or as deprived of any meaning. Regardless of what is the case, the Panel agrees with the Complainant, that two letters followed by a hyphen lack distinctive character and are therefore not enough to avoid confusing similarity of the disputed domain name with the Complainant’s trademark.
In consideration of the foregoing, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the instant case, the Complainant maintains that the Respondent is not affiliated with the Complainant and that the Complainant never authorized the Respondent to reflect its trademark in a domain name.
Despite the fact that the WhoIs indicates “El-Electrolux” as the name of the registrant organization holding the disputed domain name, the Respondent did not provide any evidence that it is indeed known by this name or that this organization effectively exists. Thus, the Panel concludes that the Respondent is not known by the name “El-Electrolux” or by the Complainant’s trademark.
The disputed domain name leads to a website prominently displaying the Complainant’s ELECTROLUX trademark and logo next to the words “Electrolux Technical Assistance”. The website contains a disclaimer stating that the Respondent is not part of the Complainant’s official assistance network, but this disclaimer only appears on a sub-page of the website, in small characters and in between other sentences, so that it is hardly visible.
It is commonly recognized that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name (see, WIPO Overview 3.0, section 4.8). In light of this, the Panel deemed appropriate to visit the Respondent’s website, which is still active, as well as the Complainant’s website at “www.electrolux.com.br”. The Panel has so noticed that the home page of the Respondent’s website is very misleading. Not only does the website contain the Respondent’s trademark and logo displayed prominently at the top of the page, but is also uses the same colors of the official website (blue and white), and a similar (although not identical) graphic design. In order to find the disclaimer referred to above, one should go to the sub-page “Serviços” (Services) and read carefully almost the entire page, which is written in small characters, until reaching the disclaimer, which is masked within other descriptions.
In some cases panels have recognized that resellers, distributors or service providers using a domain name containing a complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have legitimate interests in such domain name. In order to evaluate whether in these circumstances a respondent is indeed making a bona fide offering of goods and services, the so-called “Oki Data test” is usually applied. Under such test, some cumulative requirements must be satisfied, among which the fact that the respondent “accurately discloses the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site” (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
In the case at issue the Panel finds that the Respondent is not meeting the Oki Data test. The Respondent’s website gives the false impression that the Respondent belongs to the Complainant’s network of authorized repair and assistance service providers. The disclaimer contained in the website is insufficient to clearly disclose the Respondent’s relationship with the Complainant.
The Respondent had the opportunity to clarify its position, first by replying to the letter the Complainant sent before the filing of this UDRP proceeding, and subsequently by filing a Response to the Complaint. However, the Respondent chose not to submit its defensive arguments, which in the Panel’s view is a further admission of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
Accordingly, for all reasons mentioned above, the Panel is satisfied that also the second condition under paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The third and last requirement to be proved under the Policy to succeed in a UDRP proceeding is that the Respondent registered and used the disputed domain name in bad faith.
The Panel agrees with the Complainant and with previous UDRP panels, who in the past have decided other UDRP cases involving the trademark ELECTROLUX, that this trademark is to be considered well-known. Furthermore, it is clear from the contents of the Respondent’s website that at the time the Respondent registered the disputed domain name, it was well aware of the existence of the Complainant’s trademark. The website is designed in such a way as to falsely suggest that it belongs to the Complainant, or that the Respondent has some kind of affiliation with, or endorsement by the Complainant. This false impression is increased by the fact that the Respondent registered the disputed domain name indicating as “Registrant Organization” the name “El-Electrolux”, which is likely to be a non-existent company. Although the Respondent included a disclaimer in its website disclosing the fact that it is an independent service provider, such disclaimer is not accurately and prominently displayed and, along with all other circumstances of the case, is insufficient to demonstrate that the Respondent is acting in good faith.
For all reasons mentioned above, the Panel concludes that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, which also offers technical assistance for its products to its customers in Brazil. Moreover, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website, or of the services promoted by the Respondent on its website.
For all reasons mentioned above, the Panel is satisfied that also the third and last requirement under the Policy is met and therefore concludes that the disputed domain name <el-electrolux.com> was registered and used in bad faith.
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 <el-electrolux.com> be transferred to the Complainant.
Date: April 25, 2018