WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux (AB Electrolux) v. Peter Mazsa
Case No. D2014-1761
1. The Parties
The Complainant is Aktiebolaget Electrolux (AB Electrolux) of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Peter Mazsa of Budapest, Hungary, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <frigidaire.repair> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2014. The Response was filed with the Center on November 5, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 12, 2014. 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.
On November 21, 2014, the Panel issued Procedural panel Order No. 1 allowing the Complainant to clarify a conflicting argument in the Complaint and to submit additional evidence in support of its contention. The Respondent was allowed to comment on the Complainant's reply and additional evidence and the decision due date was extended to December 12, 2014. On November 21 and November 30, 2014, the Parties provided further information in response to Procedural order No. 1 (the content of which is reproduced under section 5 below).
On December 1, 2014, the Complainant submitted an unsolicited supplemental filing to the Center.
4. Factual Background
The Complainant is a Swedish company founded in 1901 and registered in 1919. The Complainant is a manufacturer of home and professional electrical appliances sold under brands such as FRIGIDAIRE, ELECTROLUX, AEG and ZANUSSI. In 2013, the Complainant reported sales of SEK 109 billion and maintained a complement of 60,800 employees.
A company within the Complainant's group, Electrolux Home Products, Inc. is the owner of the FRIGIDAIRE trademark as word and figurative marks in several classes worldwide including European Community trademark no. 71241 for the word mark FRIGIDAIRE registered on December 13, 1999 in international classes 7 and 11 and United States of America trademark no. 364709 registered on February 14, 1939 in international class 11.
According to the correspondence between the Parties, the Respondent states that he is an economist and is also a speculator in domain names backed by four investors. The Respondent maintains a portfolio of over 200 domain names held as financial investments and some 20 domain names which he describes as "strategic domain investments". The Respondent says that his business is the purchase and sale of generic domain names based on the valuation of their equivalent ".com" domain name. The Complainant acknowledges in the Parties' correspondence that the portfolio of some 240 domain names produced by the Respondent consists of generic terms in English, with the exception of the disputed domain name.
The disputed domain name was created on April 2, 2014. On that date, or at some unknown date thereafter, the disputed domain name was pointed to a website containing sponsored links related to the Complainant's trademark and/or similar products to those manufactured by the Complainant. During an exchange of email between the Respondent and the Registrar dated July 16, 2014, produced by the Respondent in the present proceedings, the Registrar confirmed that the website associated with the disputed domain name was created by the Registrar in accordance with its terms and conditions. The Registrar stated that the page appeared as a default setting because the Respondent had not entered his own DNS records. On about August 13, 2014, the Respondent deleted the nameservers to which the disputed domain name was then delegating and the disputed domain name ceased to connect to the website providing sponsored links. At an unknown date prior to August 13, 2014, the Respondent listed the disputed domain name for sale at a price of USD 12,008.
Between June 9 and October 8, 2014, the Parties entered into email correspondence in which the Respondent insisted that he had registered the disputed domain name in good faith and set out many of the contentions which he repeats in the Response. During this correspondence, on August 19, 2014, the Respondent sent a lengthy email to the Complainant in which he stated that he wished to explore "possible cooperative solutions to our common problem". Under the sixth heading in the email, entitled "Two possible solutions", the Respondent stated the following:
"I wrote [...] that <frigidaire.repair> will not be for sale to any natural or legal person with trademark rights for frigidaire repair and for any of the competitors of such persons. That leaves a narrow window of opportunities, not necessarily for our expected gain, but at least to covers [sic] our transaction costs.
In our preference order:
1. From your first letter we have an impression that if we would be "authorized, licensed or approved to provide information about, or goods or services with respect to, Electrolux products", you would not be against our ownership of <frigidaire.repair>. If that would be a solution for you as well, we would be not against it that we offer to sell, for its full price ($12,000 cf. the valuate.com valuation of its .com equivalent which is definitely not so beautiful than <frigidaire.repair> but has a market history at least), this domain name not for you but exclusively to those natural or legal persons who are authorized, licensed or approved to provide information about, or goods or services with respect to, Electrolux products.
2. We do not sell you the domain name
a) but you think about covering our transaction costs (which are significantly lower than the market value of the domain name and comparable to your side of direct and indirect costs in a potential legal procedure) some way
b) and we transfer the domain name through an escrow service for the cost of registration."
During the remainder of the correspondence, the Complainant attempted to ascertain the Respondent's said transaction costs without success. In an email dated August 19, 2014, the Respondent stated:
"FYI: We had a similar conversation in case of one of our .lighting domains where the domain name seems to be absolutely generic but there exist a tm [sic] nonetheless. I made a $2.000 agreement with them […] and my 4 investors were not against this agreement."
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name reproduces the entirety of the Complainant's mark and submits that such incorporation is typically sufficient to find that a domain name is identical or confusingly similar to a registered trademark. The Complainant contends that the generic Top-Level Domain ("gTLD") ".repair" is irrelevant to determine confusing similarity as it does not have any impact on the overall impression of the dominant portion of the disputed domain name. The Complainant submits that anyone seeing the disputed domain name is bound to mistake it for a name related to the Complainant.
The Complainant states that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, nor anything that would suggest that the Respondent has been using the name FRIGIDAIRE in any way that would confer legitimate rights in the name. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to generate traffic to a commercial website, namely the site containing sponsored links. The Complainant adds that this is both misleading and tarnishes the FRIGIDAIRE trademark. The Complainant notes that rights or legitimate interests cannot be created where the user of the domain name would not choose such a name unless seeking to create an impression of association with the complainant.
The Complainant states that after it contacted the Respondent, the Respondent replied a month later that it had removed the sponsored links, and the Complainant acknowledges that these had indeed been removed. With regard to the Respondent's arguments in the correspondence, the Complainant asserts that these have been concocted in retrospect. The Complainant states that some of the arguments could have had merit if the Respondent had stuck to one of them but that, taken together, they become incredible. The Complainant says that had the Respondent genuinely registered the string "frigidaire" because of its resemblance to a Hungarian term it would have made more sense to register the Hungarian word and in any event that it makes no sense to pair such a term with the English word "repair". The Complainant adds that if the Respondent was aiming for the combination of "frigid" and "aire" in their generic meaning, this becomes incomprehensible when paired with the gTLD ".repair". The Complainant also contends that the Respondent's assertion that he makes a search for the chosen string plus TLD in a trademark register makes little sense.
The Complainant submits that it is highly unlikely that the Respondent would not have known of the Complainant's legal rights in the name "Frigidaire" at the time of registration of the disputed domain name and contends that it is obvious that the fame of the trademark motivated the Respondent to register the disputed domain name. The Complainant asserts that any use of a famous trademark, which status it asserts for FRIGIDAIRE, would violate the rights of the trademark owner.
The Complainant notes that the website associated with the disputed domain name is currently inactive and asserts that the Respondent has thereby misled Internet users and caused the Complainant to lose traffic intended for its own website. The Complainant submits that rights or legitimate interests cannot be created where the user of a domain name would not choose such name unless seeking to create an impression of association with the Complainant. The Complainant asserts that it has not given any license or authorization of any kind to the Respondent and submits that this may be a factor in the finding of no rights or legitimate interests.
The Complainant asserts that the fame of its FRIGIDAIRE mark has been confirmed in previous cases under the Policy and submits that the considerable value and goodwill thereof is most likely what caused the Respondent to register the disputed domain name. The Complainant summarizes the terms of its correspondence with the Respondent and alleges that the Respondent attempted to suggest that the Complainant had tampered with its screenshot of the website associated with the disputed domain name. The Complainant submits, providing corresponding screenshots, that while the website associated with the disputed domain name was taken down around July 3, 2014, the Complainant found that it was connected again to a similar website, also containing sponsored links, on August 13, 2014. The Complainant notes that it also found out at that stage that the Respondent had offered the disputed domain name for sale for USD 12,008. The Complainant states that when it raised this matter with the Respondent, he immediately removed the disputed domain name from the marketplace and claimed that it was not for sale. The Complainant submits that the Respondent later stated that he wanted USD 2,000 for the disputed domain name.
The Complainant submits that the Respondent registered the disputed domain name with the Complainant in mind, in the hope of selling the disputed domain name to the Complainant for an amount exceeding out of pocket expenses. The Complainant notes that the disputed domain name is currently inactive but that such inaction can constitute bad faith use in terms of the Policy. The Complainant asserts that the incorporation of a well-known trademark into a domain name, by a registrant having no plausible explanation for so doing, may be an indication of bad faith registration and use in and of itself.
The Complainant submits that the disputed domain name was registered and is being used in bad faith because the disputed domain name is identical to the Complainant's distinctive and well-known trademark which has a strong reputation, the disputed domain name creates a clear association to the Complainant and its mark, the Respondent refused to transfer the disputed domain name unless he received USD 50,000 being an amount considerably in excess of out of pocket expenses and the disputed domain name is not currently being used.
In its Supplemental Filing in response to Procedural Order no. 1, the Complainant stated that the reference to USD 50,000 in the Complaint was "a typo" and noted that the correct number is USD 2,000 as stated earlier in the Complaint and as shown in the supporting evidence within Annex 10B. The Complainant apologized for this mistake.
The Respondent asserts that he can prove that he did not register and use the disputed domain name in bad faith by showing that none of the sub-paragraphs to paragraph 4(b) of the Policy are present. The Respondent submits that the sub-paragraphs (i) to (iv) of paragraph 4(b) all presuppose a bad faith intention and offers to prove that he had no such intention. The Respondent also asserts that he has rights and legitimate interests in the disputed domain name.
The Respondent submits that he is not in the trademark cybersquatting business under reference to the portfolio of his domain names, a spreadsheet of which has been made available. The Respondent notes that while he purchases domain names to sell these for profit this is not ethically questionable per se if the domain names are purchased in good faith.
The Respondent explains that while his domain names consist of generic words, "surprises sometimes happen". The Respondent says that he purchases a domain name based on the value of the equivalent ".com" domain name using a valuation website. The Respondent cites the example of <baltic.cruises> which he says that he purchased, based on the value of <balticcruises.com>, and which he resold at USD 25,000. The Respondent adds that he checks English expressions by searching on the United States Patent and Trademark Office ("USPTO") website. In the case of <baltic.cruises> the Respondent states that the search term used was "baltic cruises". In the case of <unique.lighting> the Respondent states that the search term used was "unique lighting". In the case of the disputed domain name the Respondent states that the search term used was "frigidaire repair". The Respondent asserts that he does not register as domain name expressions that are de facto trademarked even if apparently not capable of registration as a trademark.
The Respondent narrates the terms of his sale of the <unique.lighting> domain name to a trademark owner and explains that this was sold for an order of magnitude less than its value, which he had assessed as USD 19,000. The Respondent says that he did so as "costs of cooperation is [sic] much more reasonable than the costs of conflict".
The Respondent notes that in the case of the disputed domain name he found that the term was worth USD 12,000 under reference to the valuation website and then checked on the USPTO website whether "the English expression" was trademarked. The Respondent goes on to explain that he does not search for individual words such as "frigidaire" because he believed that such words are "all general words which are not trademarkable". In the case of the term "frigidaire", the Respondent states that he thought this was a generic English word because he is a native Hungarian speaker and that the Hungarian word "frizsider", which the Respondent asserts is a generic term for a refrigerator, is pronounced the same way as "frigidaire" in English. The Respondent adds under reference to the website at "en.wikipedia.org" that "frigidaire" identifies a generic refrigerator either directly or in a term derived therefrom in the Philippines, Tunisia, various French-speaking regions and Romania. The Respondent submits that anyone living in such countries would not be aware that the term is not generic.
The Respondent notes that the Complainant has challenged the logic of his registration of the disputed domain name rather than any combination of the Hungarian words "frizsider" and "javítás", the latter of which he explains is the Hungarian word for "repair". The Respondent says that he registered the disputed domain name because "the translation of "javítás" is "repair", the translation of the frizsider is supposedly the exact word". The Respondent goes on to assert that he did not suspect that "frigidaire" would correspond to a trademark because he thought it "perfectly generated from the 'frigid' stem" with the 'aire' suffix that denotes a person characterized or occupied by the stem in French loan words such as "concessionaire; doctrinaire; legionnaire; millionaire". The Respondent submits that because he knows that "frizsider javítás" has a generic meaning, he supposed that "frigidaire repair" must have such meaning as well.
The Respondent asserts with reference to the Supreme Court of Canada case of General Motors Corp. v. Bellows S.C.R. 678,  S.C.R. 678 that the term "frigidaire" is a descriptive English word made of the "frigid" plus "aire" components. The Respondent notes that the FRIDIGAIRE mark at issue in that case was held to be not distinctive per se but descriptive of the character of the article and that in the absence of proof of distinctiveness through use fell to be rejected. The Respondent also cites two books from 1899 and 1900 which use the term "frigidaire" in a generic sense before the Complainant was founded.
The Respondent submits that he purchased the disputed domain name to sell it at a profit and listed it on an online marketplace accordingly but did not purchase it to sell it to the Complainant. The Respondent adds that he removed the disputed domain name from such marketplace not because he believed that he had done anything wrong but rather because he was attempting to find an amicable solution with the Complainant.
The Respondent notes that on his interpretation of the Policy, if he registered the disputed domain name in good faith, then discovered that a person had a claim on such domain name, and only then offered to sell it to such person, this would not constitute bad faith. The Respondent asserts that this is not in any event what happened in this case. The Respondent states, with reference to the correspondence, that he suggested that the Complainant offer to cover the Respondent's transaction costs and that when "the lawyer of the complainant tried to trick me into that if I want to cooperate I should ask a price for the domain name", he answered with the "parallel example" for his ".lighting" domain name. The Respondent points to the exchange of email between the Parties to demonstrate that he provided frequent answers and did not try to stall the process.
With regard to the contention that the disputed domain name was intentionally used to attract Internet users to the Respondent's website for commercial gain, the Respondent points to the correspondence with the Registrar in which it is confirmed that the sponsored listings were published due to the actions of the Registrar and that no commercial gain was made by the Respondent. The Respondent points out that the Complainant knew of the terms of this correspondence when it prepared the Complaint. The Respondent adds that he ultimately removed the nameservers from the disputed domain name in order to ensure that the website with sponsored listings was no longer displayed. The Respondent notes that he objects to the fact that having done so he was faced with a submission by the Complainant that the disputed domain name is inactive and that this in itself can constitute bad faith use. The Respondent finally notes the terms of the Complainant's submission regarding the Respondent's alleged insistence that he be paid USD 50,000 for the disputed domain name and says that this is untrue, calling upon the Complainant to produce a copy of such request.
The Respondent concludes that he is "still open for finding a cooperative solution".
In his Supplemental Filing in response to Procedural Order no. 1, the Respondent contends that even if his failure to check a commonly known generic word in his mother language on a trademark or search engine website was "a mistake ex post", it is a completely different question, and more implausible, that this constitutes bad faith. The Respondent contends that the Complainant has failed to prove such bad faith, for which the Respondent submits the Complainant's case would require "a more customized and careful proofing process". The Respondent notes that arguments either that the Complainant's trademark is well-known, or that the Respondent's ignorance of such mark does not excuse it, do not apply given the generic meaning of the Complainant's mark. The Respondent adds that it has checked the first ten pages of the Google search engine in Hungary for the term "frizsider" and notes that it found nothing with regard to the Complainant or its mark.
With regard to the Complainant's assertion that its mention of USD 50,000 was a typographical error, the Respondent submits that while it considers this not to be a bad faith error, it does not necessarily consider the Complainant's assertion to be true. The Respondent submits that it is more plausible that the Complainant used a style or template document and failed to adjust this for the present case. Accordingly, the Respondent states that it is not sure that the Complainant has intentionally told an untruth in the present case, adding that nevertheless it does not rule out such a possibility.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely 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 has been registered and is being used in bad faith.
A. Preliminary issue: Parties' Supplemental Filings
Having reviewed the case file, the Panel noted first that the Parties were in conflict regarding the Complainant's averment that the Respondent refused to transfer the disputed domain name unless he would be paid USD 50,000, and secondly that Annexes 8D and 8E were accidently not included with the original filing of the Complaint and had not been notified to the Respondent. On November 20, 2014, the Panel therefore issued Procedural Order No. 1 wherein the Complainant was allowed five days to submit to the Center such substantive evidence as it possessed in support of the averment previously noted, and the Respondent was allowed ten days to comment on the Complainant's said submission and on the content of Annexes 8D and 8E to the Complaint. On November 21, 2014 and November 30, 2014, the Complainant and Respondent respectively filed Supplemental Filings in response to the said Procedural Order No. 1. The Parties' comments contained in the said Supplemental Filings are noted in the section above relating to their respective contentions.
On December 1, 2014, the Complainant filed a second Supplemental Filing. This had not been solicited by the Panel. It contained only the following statement:
"While the framework of the UDRP does not allow for the Complainant to submit a response to the reply submitted by the Respondent, the Complainant still feels compelled to react to the statements made by the Respondent. The arguments made by the Complainant in the complaint, are supported by documented evidence in all relevant aspects, the full correspondence between the parties was submitted as evidence and anyone reading the complaint can see that the evidence supports the argumentation made for this specific case."
Having reviewed the Complainant's second Supplemental Filing, the Panel declines to take it into account on the basis first, that it was not solicited by the Panel; secondly, that it does not further the Panel's understanding of the Parties' respective cases to any material extent; and thirdly, that it is of no other utility to the Panel in its determination of the merits of the present dispute.
B. Identical or Confusingly Similar
The inquiry under the first element is in two parts, namely first, does the Complainant have UDRP-relevant rights in a trademark and, secondly, is such trademark identical or confusingly similar to the disputed domain name.
The Panel is satisfied that Electrolux Home Products Inc. has rights in the FRIGIDAIRE mark based on the European Community trademark cited in the Complaint. This entity is not the Complainant itself, although the Complainant states that it is a company "within the Electrolux Group". In most circumstances, a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the Policy (see paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). Relevant evidence of the Complainant's authorization from the trademark holder has been produced by the Complainant, namely a Power of Attorney by Electrolux Home Products Inc. in favor of the Complainant dated September 29, 2014. In these circumstances, the Panel is satisfied that the Complainant has rights in the FRIGIDAIRE trademark within the meaning of the Policy.
The Panel notes that the Respondent has argued that in certain languages and jurisdictions the term "frigidaire" has become a generic term for a refrigerator. The Respondent made this argument in the context of his seeking to explain why he selected this term within the disputed domain name. For completeness, however, the Panel has also considered whether the Respondent's argument has any impact upon the Complainant's rights in the FRIGIDAIRE trademark for the purposes of paragraph 4(a)(i) of the Policy.
In support of its contention, the Respondent provides a link to a Supreme Court of Canada case, namely General Motors Corp. v. Bellows,  S.C.R. 678 relating to a Canadian trademark for the word mark FRIGIDAIRE. In that case, it was held that the mark was a combination of the words "frigid" and "air" and that without proof that this had become distinctive by use, the mark should have been rejected. Secondly, the Respondent provides extracts from "en.wikipedia.org" and "wikiszotar.hu" as outlined in the factual background above.
In the Panel's view, it is fundamental to this issue that the Complainant's trademark is duly registered with the Office for Harmonization in the Internal Market (OHIM) of the European Union, such that it benefits from a presumption of validity and compliance with the legal requirements for its registration. This creates a high burden for the Respondent's allegation of genericness to overcome (Laerdal Medical Corporation vs. Locks Computer Supply, WIPO Case No. D2002-0063). In the Panel's opinion, the evidence produced by the Respondent falls far short of carrying this burden.
The Supreme Court of Canada case does not further the Respondent's position. It deals with a different trademark in a different jurisdiction to that cited by the Complainant and furthermore indicates that in any event such mark was capable of becoming distinctive by use, albeit that suitable evidence to that effect had not been provided by the appellant in that case. Nor can the Panel safely rely upon the "Wikipedia" listings produced by the Respondent. As the Panel noted recently in Konga Online Shopping Limited v. Rocket Internet GmbH, Arnt Jeschke, WIPO Case No. DSC2014-0001 with reference to Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431, such listings can be created by individuals and are not necessarily subject to any fact checking. Consequently they may only be given limited weight. Finally, with regard to "wikiszotar.hu", the Panel found the link supplied by the Respondent to be unreadable.
Turning to a comparison between the Complainant's FRIGIDAIRE mark and the disputed domain name, the Panel finds that the mark is alphanumerically identical to the disputed domain name, disregarding the gTLD ".repair". The Panel notes in passing that if the gTLD itself is also brought into the comparison process, the word "repair" is likely to heighten the existing confusion caused by the identity between the mark and the second level of the disputed domain name, given that the mark is associated with home appliances manufactured by the Complainant and that the word "repair" would therefore indicate some commercial connection to the Complainant.
In all of these circumstances, the Panel finds that the disputed domain name is identical to the Complainant's trademark and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case under reference to its submissions that it has found no registered trademarks or trade names owned or operated by the Respondent corresponding to the disputed domain name, nor any evidence that the Respondent is making a legitimate noncommercial or fair use thereof. In these circumstances, the burden of production shifts to the Respondent to provide evidence of its rights and legitimate interests.
The Response mostly concerns itself with the Respondent's contention that he registered the disputed domain name in good faith. These submissions will be discussed in the next section. However, the Response also touches briefly upon the question of rights and legitimate interests in that the Respondent submits that he is a domain name dealer and is entitled to register and resell the disputed domain name for its generic value.
The problem for the Respondent's case, as the Panel sees it, is that as noted above the evidence which he has put forward is insufficient to establish that the term "frigidaire" is a generic or dictionary word or that "frigidaire repair" is a generic phrase. On the contrary, the evidence on the present record establishes to the Panel's satisfaction that FRIGIDAIRE represents a trademark and, on the strength of the materials supplied by the Complainant and the discussion in various past cases under the Policy as noted in the Complaint, a well-known mark at that . For example, the panel in Aktiebolaget Electrolux v. Vahit Yuksel, WIPO Case No. D2010-0928 stated "The Panel is well aware of the reputation and recognition of the Complainant's trademark FRIGIDAIRE" while the panel in AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 described the FRIGIDAIRE mark as "widely known".
In these circumstances, the Respondent's case that it has rights and legitimate interests by virtue of the disputed domain name being a generic or dictionary word or phrase fails. The typical questions that can arise in similar cases such as "Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?" or "Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?" (see paragraphs 2.2 and 2.6 of the WIPO Overview 2.0 respectively) presuppose that a respondent has established a generic or dictionary meaning in the domain name concerned and so do not require to be examined by the Panel in the present case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Before turning to the Complainant's case on this element, the Panel notes that the Respondent's principal contention in the Response is that he has not violated any of paragraphs 4(b)(i) to 4(b)(iv) of the Policy inclusive and must therefore be held to have registered and used the disputed domain name in good faith. In the Panel's opinion, the Respondent's interpretation of paragraph 4(b) of the Policy is incorrect and, to that extent, the Panel considers that the Respondent's case proceeds on a misapprehension. Paragraph 4(b) describes non-exclusive circumstances that, if found to be present, "shall be evidence of the registration and use of a domain name in bad faith". Accordingly, it is open to the Panel to find registration and use in bad faith in other appropriate circumstances besides those described in paragraphs 4(b)(i) to 4(b)(iv) inclusive.
The Complainant's case on this element is focused on two principal contentions. First, in terms of paragraph 4(b)(i) of the Policy, the Complainant asserts that the Respondent registered the disputed domain name with intent to sell it to the Complainant for valuable consideration in excess of his out of pocket costs. Secondly, in terms of paragraph 4(b)(iv) of the Policy, the Complainant submits that the Respondent used a landing page which contained sponsored links related to the Complainant's trademark and similar products.
Turning to the first part of the Complainant's case, the Panel notes that the Respondent listed the disputed domain name for sale in the sum of USD 12,008 and later, during the Parties' correspondence under the heading of "The www.frigidaire.repair domain name: possible cooperative solutions", the Respondent described a settlement of USD 2,000 which he had negotiated with another trademark owner in respect of a different domain name. Indeed, the Respondent is quite open about the fact that he registered the disputed domain name with intent to sell it at a profit. He explains that this is the nature of his business. He argues however that he selected the disputed domain name in good faith because it represents, in English, a phonetic rendering of the sound of the generic word for refrigerator in the Hungarian language. As such, it is the Respondent's case that he did not target the Complainant or its rights in its FRIGIDAIRE trademark through the registration or use of the disputed domain name.
The Respondent's reasons for selecting the disputed domain name require close scrutiny from the Panel. The Respondent describes in some detail how such selection was made. The Panel is told that the Respondent first identified the ".com" equivalent name (<frigidairerepair.com>) on a valuation site, then searched on the USPTO website for trademarks containing the phrase "frigidaire repair", as found in the second level of that domain name, and ultimately registered this phrase using the new gTLD ".repair", thus giving rise to the disputed domain name <frigidaire.repair>.
In providing this account, the Respondent is effectively asking the Panel to accept two propositions. The first is that the original Hungarian word "frizsider" is indeed a generic term for refrigerator and is pronounced the same as "frigidaire" would be in English. The Panel notes in passing that it does not place any weight on the Respondent's primary evidence of the "Wikipedia" page for the reasons outlined earlier in the Panel's discussion. The second proposition is that the Respondent genuinely and reasonably believed, having made a homophonic translation of the Hungarian word into English, that "frigidaire" coupled with the generic English word "repair" in the disputed domain name gave rise to a wholly generic phrase, such that the Respondent was free to register the disputed domain name and to offer to sell it to any potential purchaser at a profit.
The Panel finds that this explanation is tortuous and convoluted to say the least. The second proposition seems to the Panel to be particularly unlikely. The Panel is left with the distinct impression that the Respondent's account has been somewhat "reverse engineered" to fit the circumstances or, in other words, that the Respondent has developed this after the fact of registration and following contact from the Complainant. The Panel is therefore inclined to agree with the Complainant that the Respondent's explanation is lacking in credibility. In particular, it seems curious to the Panel that an investor in domain names consisting of generic words or phrases would simply make an assumption that the phonetic rendering of a Hungarian word into English would necessarily create any kind of meaningful generic phrase. Furthermore, even if this were a reasonable assumption, which it is not, there is to the Panel's mind an uncomfortably high degree of coincidence that the particular phonetic rendering which the Respondent happened upon was identical to a well-known trademark.
In addition to these doubts over the Respondent's explanation, the Panel considers that the Respondent's repeated protestations of his alleged good faith intent are somewhat tainted by the approach which he took in the correspondence between the Parties. The Respondent's actions simply do not strike the Panel as consistent with the behavior of a registrant in good faith. For example, rather than simply providing accurate vouching for his out of pocket costs involved in the acquisition of the domain name, in response to the offer from the Complainant to meet these, the Respondent deliberately avoided the topic for as long as possible. After having been repeatedly invited to provide such details by the Complainant, the Respondent eventually put forward an oblique example of a settlement which he claimed to have reached with a different trademark owner who had allegedly purchased a domain name from him in the sum of USD 2,000.
The Panel gains the impression from this exchange that the Respondent was being deliberately disingenuous in his dealings with the Complainant and was seeking to make a profit, arising from the trademark value of the disputed domain name, in excess of his out of pocket costs. It must be borne in mind that the Complainant had already made it clear to the Respondent well before that stage in the correspondence that the disputed domain name was identical to its well-known mark and did not feature any generic word, contrary to the Respondent's alleged previous belief. In all of these circumstances, the Panel considers that there is some force in the Complainant's primary argument and furthermore that the nature of the Respondent's explanation for its selection of the disputed domain name and its actions in the correspondence are an indicator of bad faith intent.
With regard to the Complainant's second argument, namely that the Respondent registered and used the disputed domain name in bad faith because he placed sponsored links on the associated web page, the Panel notes the terms of the Respondent's case that the links concerned were published through the actions of the Registrar with no direct input from the Respondent. This fact does not necessarily absolve the Respondent of the responsibility for such content unless the Respondent can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks (see paragraph 3.8 of the WIPO Overview 2.0). The Respondent has not placed any evidence of such a good faith attempt before the Panel in the present case, other than its correspondence with the Registrar in which the Respondent asks for an explanation for the presence of the links on its site. The Registrar's reply confirms that this is the default setting because the Respondent has not configured DNS records against the disputed domain name and notes that this is brought to the Respondent's attention in the Registrar's terms and conditions.
The tone of the correspondence is such that it is possible that the Respondent was unaware of the presence of the sponsored links until this was brought to his attention by the Complainant. It is nevertheless open to the Panel to follow the approach set down in paragraph 3.8 of the WIPO Overview 2.0 that the Respondent should still be held responsible for their publication. As that paragraph states, "Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement". Both of those possible reasons apply in the present case.
A similar situation arose in the case of Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. The respondent in that case stated that a sponsored link page found on the website associated with the domain name under consideration was created by its registrar without its knowledge and that it had not received any commercial gain therefrom. The panel in that case made the following observation:
"However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users 'for commercial gain', but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page."
In these circumstances, it matters not that the Respondent in the present case contacted the Registrar, received an explanation for the presence of the links and thereafter took steps to have these removed. The links were displayed for a not insignificant period, including for a reasonable period of time after the Complainant had first made contact with the Respondent. The links were concerned with the trademark value of the disputed domain name. Furthermore, the Respondent cannot justifiably claim to be unaware of the presence of the links, nor can he disclaim responsibility for their content. In the first place, clause 17 of the Respondent's registration agreement details the effect of the "Parked Domain Service" in clear terms and provides:
"[The Registrar] will make no effort to edit, control, monitor, or restrict the content displayed by the Parked Page Service. Any advertising displayed on your parked page may be based on the content of your domain name and may include advertisements of you and/or your competitors. It is your responsibility to ensure that all content placed on the parked page conforms to all local, state, federal, and international laws and regulations."
In the second place, as is frequently noted by panels under the Policy in similar circumstances, paragraph 2 of the Policy contains a warranty by the Respondent in favor of the Registrar that the registration of the domain name will not infringe upon or otherwise violate the rights of any third party and also unequivocally states that it is the registrant's responsibility to determine whether its domain name registration infringes or violates someone else's rights. As such, the Panel considers that the presence of sponsored links on the Respondent's website associated with the disputed domain name are a further indicator of registration and use in bad faith in the circumstances of the present case.
In addition to the two main headings of the Complainant's case on registration and use in bad faith, the Complainant's general submissions that the Respondent knew or should have known of the Complainant's trademark require some scrutiny. The Respondent does not directly deny an awareness of such mark, though his denial may be taken to be implied by the general tenor of the Response. The first problem with such denial, as the Panel sees it, is the fact that the Complainant's trademark is well-known. In these circumstances, readily obtainable knowledge thereof could be attributed to the Respondent from that fact alone (see paragraph 3.4 of the WIPO Overview 2.0 under the heading "Knew or Should Have Known"). The second problem is, as outlined above, that the Respondent's alternative explanation as to how he came by the name without having any knowledge of the mark is, in the Panel's opinion, extremely implausible.
The third problem with the Respondent's denial of knowledge lies in the nature of the investigation which the Respondent says that he carried out concerning the possibility of there being trademark value in the disputed domain name. As noted above, the Respondent says that he searched for the phrase "frigidaire repair" in the USPTO. The mere fact that the Respondent carried out any such search indicates to the Panel that the Respondent was aware that there was at least some degree of risk that a term which he allegedly believed to be generic might in fact be a trademark. This strikes the Panel as a reasonable assumption for any domain name registrant to make, bearing in mind the terms of the warranty in paragraph 2 of the Policy. A professional domain name investor in particular, such as the Respondent, might be expected to pay special attention to this, if only due to his greater familiarity with the process of investment in domain names.
However, it strikes the Panel as extremely odd that any domain name investor would conduct the phrase search described by the Respondent to the exclusion of, and in preference to, a search for the word "frigidaire" on its own, particularly in circumstances where this word has allegedly been coined from a phonetic rendering of a word in another language. To fail to conduct such a simple search on the unknown word alone, or to fail to search for such word in a popular search engine, such as the Hungarian version of "Google", seems to the Panel to be indicative of a form of deliberate blindness to potential trademark conflicts. Had the Respondent carried out such searches, the existence of the Complainant's trademark would undoubtedly have been disclosed, as it is in the Complainant's screenshot of its own search in "www.google.hu".
Such deliberate blindness as the Panel has identified in the present case may not necessarily amount to the exact species of "willful blindness" described in the line of cases including Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Media General Communications Inc v. RareNames WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. The difference in the present case is that the Respondent is not a large scale operator of automated registrations who might thereby be turning a blind eye through failure to conduct adequate searches. On the contrary, the Respondent describes a far less "scatter gun" approach to domain name investing which features individual selection followed by a manually executed rights search as part of his registration process. In these circumstances, the Respondent's failure to carry out what appears to the Panel to be a glaringly obvious search against the word "frigidaire", which could have been effected in any one of several popular search engines leaving aside the question of trademark registries, is so marked that while there may not necessarily be a general duty to carry out any form of investigation before registering a domain name the Panel considers it a factor which is at least suggestive of registration and use in bad faith in the present case. As the Panel noted at the outset of this section, the circumstances that may lead a panel to infer registration and use in bad faith are not restricted to those described in paragraph 4(b) of the Policy.
It may be seen from the discussion above that there are no less than three individual factors in the present case which point the Panel towards a finding of registration and use in bad faith in respect of the disputed domain name. In all of these circumstances, therefore, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <frigidaire.repair> be transferred to the Complainant.
Andrew D. S. Lothian
Date: December 12, 2014
1 The Panel excludes Aktiebolaget Electrolux v. Agustin Acosta, WIPO Case No. D2010-1968, which although noted in the Complaint relates to the mark ELECTROLUX and seems to have been cited erroneously.