WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Whois Privacy Protection Service by onamae.com / Doan Van Ton Ngoc Thuyet
Case No. D2019-0569
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Doan Van Ton Ngoc Thuyet of Quang Nam, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <electroluxmiennam.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2019. On March 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 19, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 20, 2019.
On March 19, 2019, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 Japanese of the Complaint, and the proceedings commenced on March 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Teruo Kato as the sole panelist in this matter on April 26, 2019. 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
According to the Complainant, 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, and the ELECTROLUX brand is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. In 2018, the Complainant had sales of SEK 124 billion and about 55,000 employees.
The Complainant asserts that it is the owner of the registered 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 and that it has a strong business presence in Viet Nam.
The Complainant submitted evidence to support such registration, including trademark ELECTROLUX in classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37, 39 (registration number 836605, date of registration March 17, 2004), trademark ELECTROLUX in classes 7, 8, 9, 11, 21, 26, 35, 37 (registration number 1260775, date of registration January 27, 2015), the designations of which includes “VN (Viet Nam)”, and trademark ELECTROLUX ULTRAPOWER in Class 7 (registration number 1126087, date of registration July 18, 2012), the designations of which includes “VN (Viet Nam)”.
The disputed domain name was registered by the Respondent on July 30, 2018. The Complainant asserts that the disputed domain name directed to a website where they offer repair and maintenance services for Electrolux products and submitted documentary evidence in support thereof. Currently, the disputed domain name does not resolve to any active webpage.
5. Parties’ Contentions
In essence, the Complainant contends that the disputed domain name is identical or confusingly similar to its prior trademarks for ELECTROLUX, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and used in bad faith.
The Complainant also assets that the disputed domain name was linked to an active website providing repair and maintenance services, using the Complainant’s trademarks without any disclaimer or reference to a license, distribution agreement or other permission from the Complainant, and submitted documentary evidence in support thereof.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese.
The Complainant has filed the Complaint in English and requests that the language of proceedings be English and contends that, among others, the proceeding will likely be put through unnecessary trouble and delay if Japanese was made the language of the proceeding. The Panel notes that information of these proceedings was given to the Respondent both in English and Japanese. The Panel hence notes that the Respondent had the opportunity to raise an objection on the Complainant’s request to proceed in English but the Respondent did not do so.
In view of all these elements, the Panel holds that the language of proceedings shall be English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Having examined the submissions made by the Complainant, the Panel finds that the Complainant has valid rights in the sign ELECTROLUX based on its intensive use and registration of the same as a trademark, commencing several years prior to the registration of the disputed domain name.
As to confusing similarity, the disputed domain name contains the Complainant’s trademark as the dominant element, with the addition of the element “miennam”, which means “south” or “southward” in the Vietnamese language.
In its submission the Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 1.8, which states that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
In the circumstances, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the first element required by the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and alleged that (among others) the Respondent is using the disputed domain name to attract Internet users to their website where they offer repair and maintenance services for Electrolux products, such offering of services being, according to the Complainant, not authorised by the Complainant, and submitted documentary evidence in support thereof.
Having examined such evidence, given the absence of any reply from the Respondent, the Panel accepts the Complainant’s contention and holds, also in view of the Panel’s findings below, that the second element required by the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Complainant contends that the Complainant’s trademark registrations predate the registration of the disputed domain name and therefore it seems highly unlikely that the Respondent was not aware of the existence of the trademark and the unlawfulness of the registration of the disputed domain name.
The Complainant further contends that the Respondent intentionally chose the disputed domain name based on the registered and well-known ELECTROLUX trademark in order to generate more traffic to its own business. The Respondent has not published a disclaimer anywhere on its website to explain that there is no existing relationship between itself and the Complainant, and the disputed domain name is currently used for a service center website and the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website.
Having considered such contention and the evidence submitted by the Complainant in support thereof, and given the absence of any reply from the Respondent, the Panel accepts the Complainant’s contention and holds that the third element required by the Policy has been fulfilled.
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 <electroluxmiennam.com> be transferred to the Complainant.
Date: April 30, 2019