WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Contact Privacy Inc. Customer 0162407742 / Maria Clara, Ofertas Electrolux and Contact Privacy Inc. Customer 0162438950 / Jose Eduardo, Utensilios Electro
Case No. D2021-4144
1. The Parties
The Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden.
The Respondents are Contact Privacy Inc. Customer 0162407742, Canada / Maria Clara, Ofertas Electrolux, Brazil and Contact Privacy Inc. Customer 0162438950, Canada / Jose Eduardo, Utensilios Electro, Brazil.
2. The Domain Names and Registrar
The disputed domain names <promocoeselectrolux.com> and <utensilioselectro.com> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 10, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 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 December 22, 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 Respondents of the Complaint, and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 4, 2022.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 14, 2022. 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 in the business of producing, among other things, appliances, kitchen equipment, cleaning products and floor care products. It owns the trademark ELECTROLUX which it has registered in several countries, including Brazil (Reg. No. 826212077 for ELECTROLUX (and Design), registered on March 5, 2014). According to the WhoIs records, the disputed domain name <promocoeselectrolux.com> was registered on August 23, 2021, and the disputed domain name <utensilioselectro.com> was registered on August 26, 2021. The Respondents have used the disputed domain names to operate ecommerce stores that allegedly offered ELECTROLUX-branded goods.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matter – Consolidation of Multiple Respondents
There are two named Respondents (two underlying registrants disclosed by the Registrar) – one for each of the disputed domain names. The Complainant requests that both be consolidated into this matter. Consolidation is proper, so the Complainant’s request for consolidation is granted.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties.
The record indicates the disputed domain names are under common control. Both of the disputed domain names:
- were registered within a short time period of time, namely August 23 and August 26, 2021;
- were registered with the same Registrar, Tucows Domains Inc.;
- have been registered using the same domain name privacy service to conceal the identity of the true registrant;
- incorporate partially and in full (depending on the domain name) the Complainant’s ELECTROLUX mark, together with dictionary terms in the Portuguese language (“promocoes” and “utensilios”); and
- resolved in the past to Shopify stores presented in the Portuguese language.
The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. Accordingly, conditions for proper consolidation of the disputed domain names into one matter are present here.
B. Identical or Confusingly Similar
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three of these elements have been met in this case.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the ELECTROLUX mark by providing evidence of its trademark registrations.
It is standard practice when comparing a disputed domain name to a complainant’s trademarks, to not take the extension into account. See WIPO Overview 3.0 at section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).
The disputed domain name <promocoeselectrolux.com> incorporates the ELECTROLUX mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The disputed domain name <utensilioselectro.com> incorporates a dominant part of the Complainant’s well-known ELECTROLUX mark. The content of the website associated with a domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview 3.0, section 1.15. In some instances, however, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Guided by these principles, the Panel takes note of the content of the Respondents’ websites – which, according to evidence and argument provided by the Complainant, purport to sell the Complainant’s products without authorization – affirm the confusing similarity between the disputed domain names and the Complainant's mark.
The Complainant has succeeded under this first Policy element.
C. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondents (with the burden of proof always remaining with the Complainant).
On this point, the Complainant asserts, among other things, that:
- the Complainant has not authorized the Respondents to use the Complainant's ELECTROLUX mark for any reason or in any manner, including in or as part of the disputed domain names;
- the Complainant is not affiliated or otherwise connected with the Respondents;
- the Complainant has found no evidence that the Respondents have been commonly known by the disputed domain names;
- the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names; and
- use of the disputed domain names in connection with commerce websites was to capitalize on the reputation and goodwill of the Complainant’s ELECTROLUX mark, misleading consumers into thinking that the websites were operated by or affiliated with the Complainant.
The Panel finds that the Complainant has made the required prima facie showing. The Respondents have not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondents’ favor.
Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
D. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
Because the Complainant’s ELECTROLUX mark is well-known, it is implausible to believe that the Respondents were not aware of that marks when it registered the disputed domain names. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain names.
The Respondents are used the disputed domain names in bad faith because through their use of the disputed domain names to intentionally attempt to divert, for commercial gain, internet users to one or more competing websites in an effort to confuse and mislead consumers. Deutsche Lufthansa AG v. Domain Admin, Whois Privacy Corp / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-2346; Net2phone Inc. v. Dynasty System Sdn Bhd, WIPO Case No. D2000-0679.
For these reasons, the Panel finds that the Complainant has established this third element under 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 names <promocoeselectrolux.com> and <utensilioselectro.com> be transferred to the Complainant.
Evan D. Brown
Date: February 28, 2022