WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. GMO-Z.com RUNSYSTEM / Nguyen thi Huong, Nguyen thi Huong

Case No. D2021-1711

1. The Parties

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

The Respondent is GMO-Z.com RUNSYSTEM, Viet Nam / Nguyen thi Huong, Nguyen thi Huong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <supportelectrolux.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 June 1, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 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 June 2, 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 in English on June 3, 2021.

On June 2, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On June 7, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Japanese of the Complaint, and the proceedings commenced on June 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2021. The Respondent did not submit any response. The Center received communications from a third party by email on June 11, 2021 and June 14, 2021. On August 1, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Keiji Kondo as the sole panelist in this matter on August 8, 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 owner of the trademark ELECTROLUX in several classes in a number of countries. Among other trademark registrations the Complainant has the following trademark registration:

International Registration No. 1260775 Trademark: ELECTROLUX Classes: 7-9, 11, 21, 26, 35, 37 Registration Date: January 27, 2015

The above identified registration includes Viet Nam as a designated country.

The ELECTROLUX brand is the Complainant’s brand for kitchen and cleaning appliances for both consumers and professional users. The below link connects customers to the official local (Vietnamese) sales and service locator and to the official websites of the Complainant:

“http://www.electrolux.vn/”

The disputed domain name <supportelectrolux.com> was registered on December 9, 2020. The Respondent is using the disputed domain name to lead users to a website where the Respondent offers repair and maintenance services for Electrolux products.

5. Parties’ Contentions

A. Complainant

The disputed domain name directly and entirely incorporates the Complainant’s well-known registered trademark ELECTROLUX and the term “support” which is highly associated with the Complainant’s business. The term “support” is insufficient to prevent similar confusion of the disputed domain name with the registered trademark ELECTROLUX. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only, see for instance. Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

It is in the opinion of the Complainant that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

The Complainant has not found that the Respondent is commonly known by the disputed domain name, and there is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services. It is clear that the intention of the disputed domain name registration is to take advantage of the Internet traffic generated due to the incorporation of the well-known ELECTROLUX trademark in the disputed domain name.

The Respondent is using the disputed domain name to attract Internet users to a website where he/she offers repair and maintenance services for Electrolux products. The Complainant has an agreement with all its authorized partners where it is stated that it is strictly forbidden to register domain names incorporating the Complainant’s trademarks. Even if the Respondent could be a licensee or distributor of the Electrolux products, such an agreement would have been in place with the Respondent.

In the light of the Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the site must accurately disclose 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, if, in fact, it is only one of many sales agents; and

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The Respondent fails at least on three elements of these tests. In the present case the Respondent does not meet all the Oki Data criteria.

It is undeniable that the Respondent was aware of the Complainant’s marks prior to the acquisition of the disputed domain name and the establishment of the Respondent’s website. Clearly, the Respondent is not known by the disputed domain name nor have the Respondent made legitimate, noncommercial or fair use of the disputed domain name.

The Respondent has been granted several opportunities to present some compelling arguments that it has rights in the disputed domain name but has failed to do so. This behavior seen together with the use of the disputed domain name cannot be considered as legitimate use of the disputed domain name.

It has to be noted 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.

Moreover, the Respondent has failed to respond to any communication attempts made by the Complainant, which should also be considered an indication of a bad faith registration.

The Complainant tried to contact the Respondent on April 26, 2021, through a cease and desist letter. In the cease and desist letter the Complainant advised the Respondent that the unauthorized use of its trademark within the disputed domain name violated their trademark rights and the requested a voluntary transfer of the disputed domain name. A reminder was sent on May 3, 2021. However, no reply was received. The Respondent has simply disregarded all communication attempts and notices given by the Complainant. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process.
It has been mentioned in earlier cases that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.

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. The Respondent has not published a disclaimer anywhere on its website to explain that there is no existing relationship between itself and the Complainant. 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. This conduct has been considered as bad faith under the Policy, and other WIPO UDRP decisions have also reached the same conclusion, as an example see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, in which the panel stated:

“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”

To summarize: the brand ELECTROLUX is a globally, including in Viet Nam, well-known trademark in the home appliance industry. It is highly unlikely that the Respondent was not aware of the right that the Complainant has in the trademark and the value of said trademark, at the point of the registration. Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant’s cease and desist letter. It is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.

Lastly, the Respondent does not meet the Oki Data principles on all elements, and, without a distinctive disclaimer, the Respondent represents itself as the trademark owner by displaying the Complainant’s logo on the website, where the Respondent offers a wide range of services relating to home appliances.

Consequently, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. On June 11, 2021 and June 14, 2021, however, the Center received e-mail communications from a third party, who identified itself as registrar, and stated that the Respondent was one of its customers. According to the third party’s communications, the Respondent was willing to give up the disputed domain name.

6. Discussion and Findings

6.1. Language of the Proceeding

In its email transmitted to the Center on June 2, 2021, the Registrar reported that the language of the Registration Agreement is Japanese. The Complainant requested that English be the language of the proceeding in the Complaint, and confirmed its request in the communication to the Center on June 7, 2021. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- The Complaint was filed in English;
- The Complainant is a Swedish entity;
- The Respondent’s address is in Viet Nam;
- The website at the disputed domain name is in English;
- On June 2, 2021, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding, but the Respondent did not comment on the language of the proceeding;
- The Respondent did not reply to the Complainant’s contentions;
- The disputed domain name contains an English word “support”, which, being closely related to the Respondent’s business, suggests that the Respondent has ability to communicate in English; and
- Ordering the translation of the Complaint would only result in extra delay and cost for the Complainant.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant owns an international trademark registration for ELECTROLUX. The disputed domain name consists of “support”, “electrolux” and a generic Top-Level Domain (“gTLD”), “.com”. The addition of the term “support”, meaning assistance, does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. The disputed domain name entirely incorporates the Complainant’s trademark ELECTROLUX.

The similarity test of the first UDRP element serves as a standing requirement, building the connection between the disputed domain name and the trademark in which the Complainant has rights. In the present case ELECTROLUX is clearly recognizable in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has never authorized the Respondent to register a domain name incorporating its trademark. Even assuming for the sake of argument that the Respondent actually provides services relating to genuine ELECTROLUX products of the Complainant, the Respondent’s use of the disputed domain name is not regarded as use in connection with a “bona fide offering of goods or services” because the Respondent fails to satisfy the Oki Data criteria. Without disclosing the relationship with the Complainant, the Respondent attempts to cause misunderstanding among its potential customers that the Respondent is somehow associated with the Complainant.

The Respondent seems to be an individual whose name is Nguyen thi Huong. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name.

Obviously, the Respondent uses the disputed domain name in connection with its business. Therefore, the Respondent’s use of the disputed domain name cannot be regarded as legitimate noncommercial or fair use.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the facts discussed in the previous section, it is clear that the Respondent attempts to use the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's trademark ELECTROLUX as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Therefore, the Panel concludes that the Respondent uses the disputed domain name in bad faith.
The disputed domain name was registered on December 9, 2020. It is long after the Complainant’s international trademark registration for ELECTROLUX was made.

Since the Respondent offers services relating to the Complainant’s ELECTROLUX products, the Respondent should have known the Complainant’s trademark when the disputed domain name was registered. Further, considering that the Respondent offers services relating to the Complainant’s ELECTROLUX products, the Panel finds that addition of the word “support” to the trademark ELECTROLUX was an attempt to cause confusion because the word “support” obviously infers service-related activities. Therefore, the Panel also concludes that the Respondent registered the disputed domain name and is using in bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of 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 <supportelectrolux.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: August 11, 2021