WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Simon Gavrels

Case No. D2021-3470

1. The Parties

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

The Respondent is Simon Gavrels, Botswana.

2. The Domain Name and Registrar

The disputed domain name <electroluxporfessional.com> is registered with Marcaria.com International, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.

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 of the Complaint, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 19, 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 Swedish multinational appliance manufacturer established in Stockholm since 1919.

The Complainant is one of the world’s leading producers of appliances, equipment for kitchen and cleaning and floor care products.

In 2020, the Complainant had about 48,000 employees worldwide.

Electrolux Professional is one of the Complainant’s subsidiaries and one of the leading global providers of food service, beverage and laundry solutions, serving a wide range of customers globally.

Electrolux Professional operates the website to which leads the <electroluxprofessional.com> domain name, registered by the Complainant on July 2, 2004.

For the purpose of its activities, the Complainant holds several trademarks (the “ELECTROLUX trademark”), including:

- the European Union word trademark ELECTROLUX No. 000077925, registered on September 16, 1998, in international classes 3, 7, 8, 9, 11, 16, 20, 21, 35, and 37;

- the United States of America word trademark ELECTROLUX No. 0195691, registered on March 3, 1925, in international class 9;

- the international semi-figurative trademark ELECTROLUX No. 836605, registered on March 17, 2004, in international classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37, and 39;

- the international semi-figurative trademark ELECTROLUX No. 1182758, registered on October 10, 2013, in international class 28.

The disputed domain name <electroluxporfessional.com> was registered on July 19, 2021.

At the time of the decision, the disputed domain name directs to a hosting platform page.

The Panel is requested to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below:

First, the Complainant stands that the disputed domain name is identical or confusingly similar to its registered ELECTROLUX trademark, since it incorporates it with the addition of the descriptive term “professional” which is written as a typo version of the generic term (i.e., “porfessional”).

The Complainant adds that the generic Top-Level Domain (“gTLD”) “.com” is inconsequential to determine similarities between the Complainant’s ELECTROLUX trademark and the disputed domain name.

The Complainant also underlines that a number of decisions under the UDRP have recognized the significant reputation and the well-known nature of the ELECTROLUX trademark.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant has not authorized the Respondent to use its ELECTROLUX trademark for any reason or in any manner, and the Respondent is not affiliated or otherwise connected with the Complainant.

The Complainant also indicates having found no evidence that the Respondent has been commonly known by the disputed domain name, nor that the Respondent owns any identical or similar trademarks to the disputed domain name.

Thus, the Complainant considers that the disputed domain name sought to capitalize on the reputation and goodwill of the Complainant’s ELECTROLUX trademark, misleading consumers into thinking that the website to which it leads is operated by or affiliated with the Complainant, so that it is highly unlikely that the Respondent intended to use the disputed domain name for any legitimate or fair use.

At last, the Complainant finds that the Respondent has registered and is using the disputed domain name in bad faith, since the Complainant’s ELECTROLUX trademark has been in use for more than a century and well before the registration date of the disputed domain name.

The Complainant states that the fact the disputed domain name reproduces the Complainant’s ELECTROLUX trademark together with the typo version of the generic term “professional” which is directly connected to the Complainant’s professional division, it is not possible to believe that the Respondent would have chosen the disputed domain name without having the Complainant’s trademark and activities in mind.

The Complainant recalls that previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith.

The Complainant also highlights that MX records are associated with the disputed domain name, which suggests that the Respondent can use the disputed domain name to send emails, which cannot be bona fide as any email address using the disputed domain name could only be used for confusing purposes.

The Complainant then reminds that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding, which can be applied to the disputed domain name since the Complainant’s ELECTROLUX trademark is well-known and it is more than likely that the Respondent was aware of it at the time of its registration of the disputed domain name.

Finally, the Complainant notes that the Respondent never replied to the cease-and-desist letter and to the reminder the Complainant had sent for trying to solve the matter amicably, and that, being associated with mail servers, the disputed domain name could be used for any purposes and notably for spamming or phishing purposes.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the ELECTROLUX trademark.

Then, the Panel notices that the disputed domain name <electroluxporfessional.com> is composed of (i) the ELECTROLUX trademark, (ii) the addition of the descriptive term “professional”, written in a typo version consisting of an inversion of the letters “r” and “o”, namely “porfessional”, (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel finds that it incorporates the entirety of the ELECTROLUX trademark, to which has only been added the descriptive term “professional” with a slight typo, which not only fails to prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, but also clearly refers to one of the Complainant’s subsidiaries, Electrolux Professional, and is nearly identical to the Complainant’s registered domain name <electroluxprofessional.com> that leads to the website operated by this subsidiary.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie 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 (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Indeed, it appears that the Complainant did not authorize the Respondent to register and use the ELECTROLUX trademark.

Moreover, the Panel finds that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Nor is there any evidence that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or faire use of the disputed domain name, without intent for commercial gain. As described above, the disputed domain name is nearly identical to the Complainant’s domain name used by its subsidiary and contains the Complainant’s trademark in its entirety. Prior panels have found that even where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0.

In any case, the Respondent did not reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <electroluxporfessional.com>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(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.

Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including:

(i) the degree of distinctiveness or reputation of the complainant’s mark,

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and

(iv) the implausibility of any good faith use to which the domain name may be put.

First, the Panel considers that it is established that the Complainant’s ELECTROLUX trademark was registered before the registration of the disputed domain name and must be considered as well known, so that, given the fact that the disputed domain name wholly reproduces the ELECTROLUX trademark, along with the descriptive term “professional” written as a slight typo version, which can clearly be considered as referring to the Complainant’s subsidiary Electrolux Professional, it is unlikely that the Respondent was unaware of its existence.

Then, the Panel notes that MX records are associated with the disputed domain name, which infers that it may be used for email purposes so that the Complainant may legitimately fear that the Respondent uses it for spamming or phishing purposes.

Finally, the Panel finds that the disputed domain name is not currently used, given that it points to the hosting platform page, and reminds that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Indeed, the Panel believes that the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:

- the fact that the Complainant’s ELECTROLUX trademark is well known;
- the fact that the Respondent has not provided any answer to the Complainant’s contentions, nor to the Complainant’s prior cease-and-desist letter and reminder;
- the fact that the disputed domain name has been set up with MX records, which poses a threat of an abusive use of the disputed domain name by the Respondent through impersonation of the Complainant;
- the Respondent’s failure to provide complete or accurate WhoIs information to the Registrar, evidenced by the Center’s inability to deliver its written communication to the Respondent;
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated good faith use of the disputed domain name by the Respondent.
Therefore, in view of all the circumstances of this case the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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

Christiane Féral-Schuhl
Sole Panelist
Date: December 3, 2021