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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Contact Privacy Inc. Customer 0161631641 / Edisom Mivaldo, Varejo Electrolux Cozinhas

Case No. D2021-1526

1. The Parties

The Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden.

The Respondent is Contact Privacy Inc. Customer 0161631641, Canada, / Edisom Mivaldo, Varejo Electrolux Cozinhas, Brazil.

2. The Domain Name and Registrar

The disputed domain name <varejoelectroluxcozinhas.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 May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 26, 2021, 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 amendment to the Complaint on May 28, 2021.

The Center verified that the Complaint together with the amendment to 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 May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on July 12, 2021. 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 the registered owner of trademarks in several jurisdictions consisting of or containing the term “ELECTROLUX”, e.g. Brazilian trademark registration No. 815852681 ELECTROLUX (word) registered on April 28, 1992 for goods in class 7, which has been duly renewed and is in force; Brazilian trademark registration No. 826212077 ELECTROLUX (figurative) registered on March 5, 2014 for services in class 35, also in force.

It results from the information disclosed by the Registrar that the disputed domain name was registered on May 11, 2021. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolved to an online shop allegedly selling and offering the Complainant’s goods, where the Complainant’s trademark was prominently featured. At the time of this decision, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that it 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. It is now a global leader in home and professional appliances. Since the start, it has relevant business presence in Brazil. It began producing vacuum cleaners and floor polishers in São Paulo, Brazil in 1950. Later in 1996 it strengthened its position on the South American market by acquiring the second-largest white goods manufacturer in Brazil. Nowadays, it is the most profitable Brazilian company in consumer electronic. The Complainant underlines that the ELECTROLUX brand is its flagship brand for kitchen and cleaning appliances for both consumers and professional users. In Brazil, the Complainant has a strong business presence through its wholly owned subsidiary, Electrolux do Brasil S.A., as well as via its official licensing partners and service desks. The Complainant uses the domain names <electrolux.com>, <electrolux.com.br> and <electrolux-professional.com.br> to connect to a website through which it informs potential customers about its ELECTROLUX marks and its products and services.

The Complainant contends that its trademarks ELECTROLUX are worldwide well-known.

The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s earlier trademarks, since it directly and entirely incorporates the Complainant’s well-known registered trademark ELECTROLUX and the addition of the generic terms, i.e. the Portuguese word “cozinha” - meaning “kitchen” in English - and “varejo” - meaning “retail” in English, does not differentiate the disputed domain name from the registered trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name. The Respondent has not registered the disputed domain name in connection with a bona fide intent since he has not been authorized to register the disputed domain name or has any connection to the Complainant and the website to which the disputed domain name resolved, reproduced the layout, color scheme, logos, and product images, as displayed on the Complainant’s website at “www.electrolux.com”. In addition, the Respondent has attempted to mislead consumers into believing that the Respondent’s website is affiliated with, sponsored by, or endorsed by the Complainant. In fact, the Respondent’s website did not contain any notice or disclaimer that accurately and prominently disclosed the Respondent’s lack of affiliation with the Complainant. In light of the high degree of visual similarity between the Respondent’s website and the Complainant’s official website, the Respondent’s website gave the misleading impression of being a website operated by the Complainant.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, 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 Respondent is making an apparent association with the Complainant. From the Complainant’s point of view, the Respondent intentionally chose the disputed domain name based on a registered and well known trademark in order to generate more traffic to its own business. In light of the Respondent’s use of the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and the goods offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark ELECTROLUX. Reference is made in particular to Brazilian trademark registration no. 815852681 ELECTROLUX (word) registered on April 28, 1992 for goods in class 7 and Brazilian trademark registration No. 826212077 ELECTROLUX (figurative) registered on March 5, 2014 for services in class 35.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / William Douglas, WIPO Case No. D2021-0774; Compagnie Générale des Etablissements Michelin v. Milen Radumilo, WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark ELECTROLUX is fully included in the disputed domain name <varejoelectroluxcozinhas.com>, preceded by the generic and descriptive term “varejo” - meaning “retail” in English – and followed by the generic and descriptive term “cozinha” - meaning “kitchen” in English.

Furthermore, it is the view of this Panel that the addition of the terms “varejo” and “cozinha” in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name.

Finally, the gTLD “.com” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and, in particular, did not authorize the Respondent’s use of the trademark ELECTROLUX, e.g. by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Finally, it results from the Complainant’s non-contested evidence that the disputed domain name resolved to a website on which the Complainant’s ELECTROLUX goods were sold and which did not accurately and prominently disclose the Respondent’s relationship with the Complainant. Since this use is clearly commercial, it cannot be considered a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy and the Oki Data jurisprudence (e.g. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) as it is misleading and diverting consumers, making them erroneously believe that the Respondent is an authorized dealer, retailer, or re-seller of ELECTROLUX products, and is authorized to promote sales of ELECTROLUX products. This is reinforced by the following facts: (1) the Respondent did not add any note, information or disclaimer pointing out that it actually has no relationship with the Complainant; (2) the website was accessible under a domain name that comprises Complainant’s trademark entirely, see also 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. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

It is acknowledged that once the Panel finds 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 disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark ELECTROLUX is widely known. In addition, it results from the Complainant’s documented allegations that the disputed domain name resolved to a website on which the Complainant’s goods were allegedly sold and where the Complainant’s trademark was prominently featured. Therefore, this Panel has no doubt that the Respondent positively knew that the disputed domain name consisted of the Complainant’s trademark when registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed ELECTROLUX mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., OSRAM GmbH v. Private Registration, OK HOSTING SC, WIPO Case No. D2021-0600; Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100).

Moreover, the further circumstances surrounding the disputed domain name’s registration and use support a finding that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Complainant’s trademark ELECTROLUX is widely known; (2) the Respondent has used a privacy service hiding its identity; (3) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (4) the implausibility of any good faith use to which the disputed domain name may be put. Furthermore, the use of the disputed domain name to resolve to an online shop prominently displaying the Complainant’s mark suggests an intent by the Respondent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark ELECTROLUX and affirms the finding of bad faith in these circumstances. In addition, the fact that the disputed domain name currently does not resolve to an active website does not affect the finding of use in bad faith (see WIPO Overview 3.0, section 3.3).

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

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, <varejoelectroluxcozinhas.com> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: July 26, 2021

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