WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Vladimir Pilnik
Case No. D2018-1071
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Vladimir Pilnik of Moskovskaya oblast, Russian Federation.
2. The Domain Names and Registrar
The Disputed Domain Names <electrolux.one> and <electrolux.online> are registered with Key-Systems GmbH dba domaindiscount24.com and REG.RU LLC accordingly (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 14, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 17, 2018 the Registrar Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response for the Disputed Domain Name <electrolux.one> confirming that the Respondent is listed as the registrant and provided the contact details. The Registrar further indicated that the language of the registration agreement for the Disputed Domain Name was English. On May 23, 2018, the Registrar REG.RU LLC transmitted by email to the Center its verification response for the Disputed Domain Name <electrolux.online> confirming that the Respondent is listed as the registrant and provided the contact details and further indicated that the specific language of the registration agreement as used by the registrant for <electrolux.online> was Russian.
On May 23, 2018, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The same day the Complainant confirmed to the Center that it had nothing to add to the language of proceeding request in its Complaint. The Respondent did not comment on the language issue.
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 in English and Russian of the Complaint, and the proceedings commenced on May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default in English and Russian on June 19, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on June 21, 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, founded in 1910, today is a global leader in household appliances and appliances for professional use. Through its esteemed brands, such as Electrolux, AEG, Zanussi, Frigidaire, and Westing-house, the Complainant sells more than 60 million products to customers in more than 150 markets every year.
The Complainant owns a large portfolio of ELECTROLUX trademark registrations around the world, including Russian Federation, in particular, but not limited to:
- International trademark No. 836605, registered on March 17, 2004 in respect of goods and services in classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37, 39;
- International trademark ELECTROLUX ULTRAPOWER No. 1126087, registered on July 18, 2012 in respect of "vacuum cleaners" in class 7.
The Complainant operates a number of domain names containing its ELECTROLUX Trademark for promotion its goods and services, among which are <electrolux.com> (registered on April 30, 1996), <electrolux.ru> (registered on July 2, 1998), <electroluxgroup.com> (registered on July 14, 2013), <electrolux.by> (registered on April 5, 2005).
According to the current record, the Disputed Domain Names were registered on February 28, 2017.
On the date of this decision the Disputed Domain Name <electrolux.one> resolves to a page with an indication: "This Account has been suspended" and the Disputed Domain Name <electrolux.online> is active and is used to redirect the Internet users to competitive website under the Cyrillic domain name <электролюкс.онлайн> offering the products under the Complainant's ELECTROLUX Trademark.
5. Parties' Contentions
The Complainant contends that since the Disputed Domain Names reproduce the ELECTROLUX Trademark in its entirety, they are therefore confusingly similar to the Complainant's Trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Disputed Domain Names since the Respondent is not known by the name "ELECTROLUX".
The Complainant also claims that the Disputed Domain Names were registered and are being used in bad faith in view of the Respondent replied to the Complainant's cease and desist letter seemed to be willing to adhere to the request for a transfer the Disputed Domain Name to the Complainant, however after sending two reminders to him by the Complainant in respect of authorization code providing, the Respondent never replied back.
The Complainants also notes that all results under Google search for "ELECTROLUX" are related to the Complainant.
The Complainant summarizes that its ELECTROLUX Trademark is well-known in respect of home appliance industry and that it is highly unlikely that the Respondent was not aware of the Complainant's trademark rights.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the complainant must prove the presence of each of the following three elements:
(i) identical or confusingly similarity of the domain name to a trademark or service mark in which a complainant has rights; and
(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.
6.1. Language of Proceedings
According to paragraph 11 of the Rules the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise.
The Registrars have accordingly confirmed that the language of the Registration Agreement for the Disputed Domain Name <electrolux.online> is Russian and the language of the Registration Agreement for the Disputed Domain Name <electrolux.one> is English. The Complainant submitted the Complaint in English and also requested that English be the language of proceedings due to the following reasons:
a) the Complainant is not familiar with Russian language
b) the Respondent was provided with a cease and desist letter to which a response was received in English
c) the Disputed Domain Names are composed with Latin script characters rather than Russian characters.
In accordance with paragraph 10(c) of the Rules "The Panel shall ensure that the administrative proceeding takes place with due expedition".
The evidence shows that the Respondent did not comment on or object to the Complainant's language request provided to him by the proper Center's English and Russian communications. The Respondent was properly notified of this proceeding in English and Russian.
Determination of the language of proceedings is the authority of the Panel having regard to the circumstances of the administrative proceeding according to the Rules. In this case the language of one of the Disputed Domain Names, namely <electrolux.online>, is Russian. The Panel takes into account that the Complainant is a Swedish company and Russian language of the proceedings will be unfair burden for the Complaint. The Panel also adverts that the Registration Agreement for the second Disputed Domain Name <electrolux.one> registered by the same Respondent is English, and that the both Disputed Domain Names are composed in English.
Moreover taking into consideration that the Respondent replied to the Complainant's cease and desist letter in English and has not responded to the Complainant's request regarding the language of the proceedings, the Panel concludes that the language of proceedings should be English.
A. Identical or Confusingly Similar
The Complainant has established rights in its ELECTROLUX Trademark in view of large number of registrations around the globe and long use. Previous Panels have also acknowledged the ELECTROLUX Trademark as well-known, see e.g., Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184; Aktiebolaget Electrolux v. Linsheng, WIPO Case No. D2013-1221. The Complainant also operates a large number of domain names, which incorporate its ELECTROLUX Trademark.
The Disputed Domain Names entirely reproduce the Complainant's ELECTROLUX Trademark. The addition of new generic Top-Level Domains ".one" and ".online" to the Disputed Domain Names does not influence on determining confusing similarity under the Policy. Previous UDRP panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark, see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com, WIPO Case No. D2011-2262.
In view of the above the Panel considers the first element of paragraph 4(a) of the Policy is satisfied by the Complainant.
B. Rights or Legitimate Interests
The Complainant has used its ELECTROLUX Trademark for almost 100 years and its domain name ˂electrolux.com˃ – since 1996, which is long before the Respondent registered the Disputed Domain Names in 2017.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. The Complainant has never authorized in any way the Respondent to use its well-known ELECTROLUX Trademark.
In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1 where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
Currently the website under one of the Disputed Domain Names, namely <electrolux.online>, redirects the Internet users to the Respondent's website "www.электролюкс.онлайн" offering for sale purported Complainant's goods. At the top of the website's page the Complainant's Trademark is displayed that creates an impression that the Respondent is connected with the Complainant. At the same time the Respondent is however neither an authorized retailer nor a distributor of the Complainant. Moreover the website under the Disputed Domain Name <electrolux.online> does not disclose any information with respect to the relationship with the Complainant. Also the website's section "About company" does not contain any information.
According to the WIPO Overview 3.0, section 2.8.1 panels have recognized that resellers, distributors, or service providers using a domain name containing the 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 a legitimate interest in such domain name. Outlined in the "Oki Data test", the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark.
As is seen from the circumstances of this case it is obvious that the website under the Disputed Domain Name <electrolux.online> was designed to create an impression of official or related Complainant's website, without being the same. Thus the Respondent does not match the conditions of the Oki Data test.
Therefore in view of the above and in view of the Respondent has never been provided by any permissions or licences by the Complainant there is no bona fide offering of goods and services and the Respondent consequently does not have a legitimate interest in such Disputed Domain Name.
Regarding the second Disputed Domain Name <electrolux.one>, the website under which is inactive, it should be noted that nothing indicates the use of this Disputed Domain Name in connection with a bona fide offering of goods or services by the Respondent. Also there is nothing to indicate that the Respondent made a legitimate noncommercial or fair use of the above Disputed Domain Name, that is, in its turn, an indication of the absence of the Respondent's rights or legitimate interests in this Disputed Domain Name.
Finally, the Respondent did not reply to the Complainant's reminders as well as to the Complainant's arguments and does not take part in the administrative proceedings, therefore the Respondent has failed to indicate any circumstance which could demonstrate any rights or legitimate interests in the Disputed Domain Names, or to argue against the Complainant's prima facie case in accordance with paragraph 4(c) of the Policy.
Therefore, the Panel finds that the second element of the UDRP has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates some 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 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 your website or location or of a product or service on your website or location.
The Panel comes to the conclusion that the Disputed Domain Names were registered and are being used in bad faith in view of the following. The Complainant's products under the ELECTROLUX Trademark are worldwide famous so the ELECTROLUX Trademark has strong distinctive character. The Disputed Domain Names were registered long after the Complainant registered its ELECTROLUX Trademarks. The Disputed Domain Names incorporate the well-known ELECTROLUX Trademark in its entirety, therefore it is obvious that the Respondent has known and has been aware of the Complainant's ELECTROLUX Trademark before he registered the Disputed Domain Names. Moreover the Respondent's familiarity with the Complainant's Trademark is also supported by active website under the Disputed Domain Name <electrolux.online> which redirects the Internet users to the Cyrillic version <электролюкс.онлайн> and where the products under the Complainat's ELECTROLUX Trademark are on sale.
The Panel notes that website under the Disputed Domain Name <electrolux.one> is not active on the date of this decision. However taking into account in how way the Respondent is using the Disputed Domain Name <electrolux.online>, it is possible to suppose that <electrolux.one> could also be used not for a bona fide purpose.
It is obvious that the Respondent has registered and has used the Disputed Domain Names for the purpose of attracting the Internet users to its competing website (or probably websites) by creating a likelihood of confusion with the Complainant's Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and of the products sold on it. The Disputed Domain Name <electrolux.online> resolves to website which displays the Complainants' Trademark that give strong impression that this website is related to or authorized by the Complainant. In view of the Complainant is very active in selling and promotion of its products under the ELECTROLUX Trademark on the Internet, the Internet users will most likely consider that the Disputed Domain Names refer to the one of the Complainant's or its distributor's official websites. The Respondent obviously chose to register the Disputed Domain Names, which are confusingly similar to the Complainant's ELECTROLUX Trademark, with the intention to benefit from the Complainant's reputation.
As evidence (Annex 9 of the Complaint), provided by the Complainant, shows the Complainant has contacted the Respondent through a cease and desist letter to which the Respondent replied, allegedly willing to transfer the Disputed Domain Names to the Complainant. However after this response the Respondent never replied back to the Complainant's reminders. This also supports an inference of bad faith and an intention to delay resolution of the matter.
In view of the above the Panel finds that the Respondent clearly registered and is using the Disputed Domain Names in bad faith.
Accordingly, the Panel concludes that the third element of the Policy has been met.
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 Names <electrolux.one> and <electrolux.online> be transferred to the Complainant.
Date: July 5, 2018