WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Contact Privacy Inc. Customer 0162038077 / Taiunara Caroni Lemes, showelectro
Case No. D2021-2435
1. The Parties
The Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden.
The Respondent is Contact Privacy Inc. Customer 0162038077, Canada / Taiunara Caroni Lemes, showelectro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <shopelectrolu.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 July 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 July 29, 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 August 2, 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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on September 17, 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 a world leading producer of home and professional cleaning appliances and kitchen cleaning equipment and products. The Complainant maintains extensive business operations in Brazil.
The Complainant is the owner of the mark ELECTROLUX (the “Mark”). The Mark is registered in 150 countries around the world. Pertinent to this proceeding, the Complainant owns the Brazilian trademark Registration No. 815852681 for the Mark obtained on April 28, 1992.
The Complainant owns numerous Internet domain names that incorporate the Mark including, but not limited to, <electrolux.com.br> (registered in 1996) that resolves to a website selling and promoting the Complainant’s products and services.
The Respondent registered the disputed domain name on July 2, 2021, which currently resolves to an inactive website.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed by linking the Complainant’s Mark (with the exception of the letter “x”) to the dictionary term “shop” as a prefix. The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith. The Complainant contents that the Respondent’s original website resolved to a copycat website that had a look, feel, and branding of the Complainant’s official website without any disclaimer that accurately and prominently disclosed the Respondent’s lack of affiliation with the Complainant, and which offered for sale various products. Because the Respondent’s original website looked like the Complainant’s official website, the Complainant received consumer complaints as they did not receive the products while purchasing on the Respondent’s original website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark, except for the final letter “x”, preceded by the dictionary word “shop”. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the addition of the dictionary term. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7; Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard, Maryellen Dillard, WIPO Case No. D2021-0609 (transferring <bombasy.shop> and <bombes.shop>); See also 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, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).
The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759 (transferring <monsterenergy.world>); International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581.
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, being composed of the Mark in its entirety, except for the final letter “x” and an additional term “shop”, referring to the Complainant’s business, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. The Mark is not a common or descriptive term and the additional term “shop” in the disputed domain name, referring to the Complainant’s business. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering the disputed domain name. Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. (Instagram LLC v. contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419).
The Complainant asserts that the disputed domain name originally resolved to a website that copied the Complainant’s website’s look and feel and offered for sale various products. The Complainant asserts the Complainant was able to persuade with the Respondent’s website hosting company to “disable” the Respondent’s website before the Complainant was able to make screenshots of the Respondent’s website. The Complainant’s assertions have gone unchallenged by the Respondent and are accepted by the Panel under the circumstances of this case. The creation of a commercial copycat website establishes that the disputed domain name was registered and used in bad faith.
The construction of the disputed domain name which invites unsuspecting Internet users to “shop” for the Complainant’s branded products at the Respondent’s website demonstrates bad faith registration and use. It is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109 (transferring <dpdcouriercompany.com>); Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335 (transferring <monsterenergy.club>).
Finally, the current “disabled” status of the Respondent’s website does not absolve the Respondent of bad faith registration and use. See WIPO Overview 3.0, section 3.3.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <shopelectrolu.com> be transferred to the Complainant.
William F. Hamilton
Date: October 1, 2021