WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Захаров Евгений

Case No. DUA2020-0006

1. The Parties

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

The Respondent is Захаров Евгений, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <electrolux.com.ua> is registered with “Ukrainian Internet Names Center” LTD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrant verification in connection with the disputed domain name. On February 26, 2020, 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 March 4, 2020 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 March 9, 2020 in this regard.

On March 4, 2020, the Center sent an email communication in English and Ukrainian to the Parties indicating the registration agreement for the disputed domain name is in Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On March 5, 2020, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not respond to the email communication from the Center in relation to the language of the proceeding.

The Center verified that the Complaint and amended Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint in both Ukrainian and English, and the proceeding commenced on March 26, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was April 15, 2020. The Respondent failed to submit the Response by the above indicated date. Accordingly, the Center notified the Respondent’s default on April 16, 2020.

The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on April 24, 2020. 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen, cleaning products and floor care products. The Complainant owns well-known ELECTROLUX trademark used in connection with kitchen and cleaning appliances for both consumers and professional users.

The Complainant, through its brands Electrolux, Aeg, Anova, Frigidaire, Westinghouse, and Zanussi, sells more than 60 million household and professional products in more than 150 markets every year. In 2010, the Complainant acquired manufacturing operations in Ukraine.

The Complainant owns numerous ELECTROLUX trademark registrations in more than 150 countries throughout the world including:

- International Registration No. 1260775 registered January 27, 2015 for goods and services in classes 7, 8, 9, 11, 21, 26, 35, 37, designations include Ukraine;

- International Registration No. 1182758 registered October 10, 2013 for goods in class 28, designations include Ukraine;

Furthermore, the Complainant owns the domain name <www.electrolux.com>.

The Respondent is a Ukrainian individual. According to the WhoIs, the disputed domain name was registered in the name of the Respondent on January 26, 2019. The website under the disputed domain name is currently inactive. However, based on the take down report provided by the Complainant when the website was active, it looked as if it offered for sale ELECTROLUX branded kitchen and cleaning appliances and was marked as “ELECTROLUX official Internet store” (in Ukrainian: “ELECTROLUX фирменый интернет-магазин”).

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant owns numerous ELECTROLUX trademark registrations in many jurisdictions throughout the world including in Ukraine and is well-known. The Complainant’s trademark acquired protection significantly prior to registration of the disputed domain name.

The country code Top-Level Domain (ccTLD) “.com.ua” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

The Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent is not commonly known by the disputed domain name, the Respondent is not using the disputed domain name, and the Respondent is not preparing to use it in connection with a bona fide offering of goods and services. The intention of the registration of the disputed domain name is to take advantage of the well-known ELECTROLUX trademark.

The Respondent registered the disputed domain name to take advantage of the well-known ELECTROLUX trademark in the disputed domain by using the disputed domain to send emails which are intended to give the recipient the wrongful impression that the emails are sent from the Complainant and extract sensitive information as well as money from the recipients of the emails (phishing).

The use of a domain name for fraudulent activity, including for sending deceptive emails can never constitute rights or legitimate interest in the domain name.

The Respondent is not a reseller nor a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of its ELECTROLUX trademarks, in a domain name or otherwise.

The Complainant alleges that the disputed domain name was registered and/or is being used in bad faith by the Respondent to take advantage of the ELECTROLUX trademark by using a confusingly similar domain name to send fraudulent emails, portraying itself to be the Complainant, because the disputed domain name is confusingly similar to the official website of the Complainant <electrolux.com>.

The Complainant seeks a decision that the domain name be transferred to the Complainant.

B. Respondent

The Respondent did not respond to the Complaint

6. Discussion and Findings

Given the similarities between the .UA Policy and Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to the UDRP precedents when relevant.

A. Language of Proceeding

According to paragraph 11(a) of the .UA Rules “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In this case the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Ukrainian, Russian.

The Complainant filed the Complaint in English and requested English to be the language of this proceeding. The Respondent did not send any email communications (but the Panel notes that the Respondent is located in Ukraine).

The Panel notes that the disputed domain name is composed of Latin characters, and that ELECTROLUX has no meaning in Ukrainian or Russian languages.

In previous similar cases, panels after considering the totality of the circumstances found that it would be fair to the parties to designate English as the language of the proceeding (see OPPO Pte. Ltd. v. Alexander Leonidovich Shirkov, WIPO Case No. DUA2019-0001).

This Panel also concurs with the findings in, Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002,where it is noted that “while applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.”

The Center duly notified the Respondent in English and in Ukrainian on the request of the Complainant to use English as the language of the proceeding (being Ukrainian a language of the Registration Agreement accepted by the Respondent when registering the disputed domain name). The Respondent was also provided with an opportunity to object and request the proceeding to not be carried in English. However, the Respondent did not use this opportunity and did not object for English to be the language of the proceeding.

Furthermore, the Panel notes that the Center sent the notification of the Complaint and commencement of the proceeding to the Parties in both languages (English and Ukrainian), accepting the Complaint filed in English, and giving equal opportunities to the Parties to participate in the proceeding. In addition, the Panel notes that the Respondent did not submit a Response, and did not use an opportunity to argue his case.

The Center also appointed the Panel that is familiar with all three languages, English, Russian and Ukrainian, in order to treat the Parties equally in the proceeding.

Therefore, the Panel concludes that each Party of the proceeding was treated fairly and was provided a fair opportunity to present its case.

The Panel also finds additional translation of the filings would unfairly disadvantage and burden the Parties and delay the proceeding and adjudication of this matter.

Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

B. Identical or Confusingly Similar

The Complainant has proved rights in the ELECTROLUX trademark though the international registrations designating Ukraine.

Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

The Panel also considers that the disputed domain name is identical to the Complainant’s ELECTROLUX trademarks.

The disputed domain name <electrolux.com.ua> consists of the Complainant’s trademark ELECTROLUX and the country code suffix “.com.ua.” The country code suffix is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Therefore, the Panel disregards the country code suffix for the purposes of this comparison.

Furthermore, the Panel notes that disputed domain name incorporates the Complainant’s trademark ELECTROLUX in its entirety.

The Panel finds that according to a side-by-side comparison of the disputed domain name and the textual components of the ELECTROLUX trademark, the disputed domain name reproduces in its entirety the Complainant’s ELECTROLUX registered trademark and, thus, that the Complainant’s ELECTROLUX registered trademark is recognizable within the disputed domain name.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the.UA Policy.

C. Rights or Legitimate Interests

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

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. However the overall burden of proof remains with the Complainant. Paragraph 4(c) of the .UA Policy provides circumstances that demonstrate the Respondent’s rights or legitimate interests to the disputed domain name, and that complainants frequently address to show that the activities of the Respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the .UA Policy), that the Respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the .UA Policy) and that the Respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the .UA Policy).

The Complainant claims that the disputed domain name was used in fraudulent activities such as the email attacks (phishing), and therefore, the Respondent has no rights or legitimate interests in relation to the disputed domain name. However, Panel, notes that such claim of the Complainant was not supported by the provided evidence.

The Panel finds that the disputed domain name is currently not resolving to an active website, however, based on the provided by the Complainant’s report, when the website was active, it looked as it offered for sale ELECTROLUX branded kitchen and cleaning appliances and was marked as “ELECTROLUX official Internet store” (in Ukrainian: “ELECTROLUX фирменый интернет-магазин”), creating a risk of confusion with the Complaiannt.

The Panel notes that the website, when it was active, did not disclose the relationship (or lack thereof) between the Complainant and the Respondent. When the website was active the Respondent offered goods and services under the disputed domain name representing itself as the “ELECTROLUX official Internet store” (in Ukrainian: “ELECTROLUX фирменый интернет-магазин”), and thus creating a risk of confusion with the Complainant, failing also to satisfy the criteria 3 of the Oki Data Test (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

In addition, the Panel notes that the disputed domain name (disregarded the country code suffix) is identical to the Complainant’s trademark, which carries a high risk of implied affiliation.

Under such circumstances, the Panel concludes that the Respondent is not and was not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the .UA Policy).

Furthermore, the Panel finds that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the .UA Policy.

According to the Registrar’s information, “Захаров Евгений” is the registrant of the disputed domain name. The Panel did not found any evidence that the Respondent is commonly known by the disputed domain name <electrolux.com.ua>. The Panel takes into account that “ELECTROLUX” does not have any meaning in Ukrainian or Russian languages.

Based on the evidence provided by the Complainant, the Panel infers that the Respondent aimed to monetize the disputed domain name by selling products on the website, and/or claiming affiliation with the Complainant when it was active, and the Panel finds that the Respondent activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the .UA Policy).

Accordingly, the Panel finds that the Complainant has satisfied the second element of the .UA Policy, namely paragraph 4(a)(ii).

D. Registered or Used in Bad Faith

As the Panel established above, the Complainant’s mark ELECTROLUX is distinctive and well-known including in Ukraine. The Complainant vests considerable efforts in domain name enforcement actions in order to recover domain names registered and used by the third parties in bad faith.

The Panel notes that the Complainant’s marks for ELECTROLUX in Ukraine were registered prior to the registration of the disputed domain name, and the Respondent, through the nature of the activities on the website under the disputed domain name was aware that such registration abuses the Complainant’s trademark rights.

As the Panel noted before, the Complainant’s mark ELECTROLUX is distinctive and well-known including in Ukraine. The Responded failed to submit a response or provide any evidence of a good-faith use. On the contrary, the Panel, found that the Respondent prior actions in relation to the disputed domain name indicate that the Respondent aimed to monetize the disputed domain name by selling products and claiming affiliation with the Complainant. Furthermore, the Panel finds its implausible that the disputed domain name could be put to use by the Respondent in good faith considering that it is identical to the Complainant’s trademark (disregarded the country code suffix). Therefore, under the totality of the circumstances, the Panel finds that the current “passive holding” of the disputed domain name by the Respondent constitutes bad faith.

The Respondent has no rights or legitimate interests in the disputed domain name.

Noting the use of the disputed domain name provided by the Complainant, the Panel finds that the Respondent’s intention has always been to use the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the .UA Policy).

Therefore, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name <electrolux.com.ua> be transferred to the Complainant.

Oleksiy Stolyarenko
Sole Panelist
Date: May 11, 2020