WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Registration Private, Domains By Proxy, LLC / Name Redacted
Case No. D2017-0353
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Name Redacted.
2. The Domain Name and Registrar
The disputed domain name <electr0lux.com> (the Domain Name) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2017. On February 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 6, 2017 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 6, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2017.
On March 14, 2017 the Respondent sent an email to the Center stating that the Domain Name had nothing to do with him and that his name and address had been used fraudulently without his authority.
On March 16, 2017, the Center notified the suspension of the proceedings to the Parties, upon request of the Complainant. On April 12, 2017, the Center received the Complainant’s request for reinstitution of the proceeding. On April 13, 2017, the Center reinstituted the proceedings, and the due date for Response was April 24, 2017.
The Respondent did not submit any other response. Accordingly, the Center notified the Commencement of Panel Appointment Process on April 25, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on May 16, 2017. 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. Preliminary Matters
The Domain Name, <electr0lux.com>, was registered on August 15, 2016 most likely by someone other than the Respondent but using the Respondent’s personal information without their knowledge. The Panel has therefore redacted the Respondent’s name from this decision. The Respondent, perhaps quite understandably, has not participated in these proceedings and neither has any third party (the actual registrant or otherwise). References hereafter to the Respondent, except as may otherwise be required to perfect the order made herein, should be treated as referring to the actual registrant rather than the person recorded as such.
5. Factual Background
The Complainant is a Swedish company founded in 1901 and one of the world's leading producers of appliances and equipment for kitchen and cleaning products, and floor care products. ELECTROLUX is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. The Complainant is the owner of the registered trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries around the world. The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term "electrolux" e.g. <electrolux.com> (created on April 30, 1996). The Complainant uses this domain name to connect to a website through which it informs potential customers about its ELECTROLUX mark and its products and services.
6. Parties’ Contentions
A. Complainant - the following is a summary of the main contentions of the Complainant:
The Respondent’s Domain Name is Confusingly Similar to the Complainant’s Mark
The Domain Name directly and entirely incorporates the Complainant’s well-known registered trademark ELECTROLUX. The only difference between the Domain Name and the trademark is the replacement of the letter “o” with the numerical “0”. Those characters are visually close. The addition of the gTLD “.com” does not add any distinctiveness to the Domain Name and it is standard practice to disregard the gTLDs under the “confusingly similar” test.
The Domain Name should be considered as confusingly similar to the registered trademark ELECTROLUX.
The Respondent has No Rights or Legitimate Interests in the Domain Name
There can be no bona fide offering of goods or services where the Domain Name incorporates a trademark which is not owned by the Respondent. Further, the Respondent is not known by the name “electrolux”. The Domain Name is suspended and the website associated with it is currently disabled. However, that does not prevent the Respondent from using the Domain Name as a source email address to lure people into malicious web sites using URL links in emails. The suspension only prevents email replies from being delivered.
An almost identical domain name, <electr0lux.co> (“.co” being the country-code Top-Level Domain ("ccTLD") for Colombia) was recently used in a sophisticated spear phishing attack i.e. where an email appeared to be from an individual or business that was known to the recipient in an attempt to obtain credit card and bank account numbers, passwords etc. In this attack, multiple emails were circulated to employees of the Complainant purporting, in one case, to be from the Complainant’s CFO (using the email, “[name]@electr0lux.co”). The Complainant is concerned that the Domain Name could be used in the same manner.
It is clear that the Respondent was aware of the Complainant’s mark prior to the acquisition of the Domain Name.
The Respondent is not known by the Domain Name and there is no suggestion that the Respondent has made legitimate, noncommercial use of the Domain Name.
The Respondent Registered and Is Using the Domain Name in Bad Faith
The Domain Name was registered in bad faith:
The Complainant’s International Trademark Registration (No. 1126087 for ELECTROLUX ULTRAPOWER) registered on July 18, 2012 predates the registration of the Domain Name.
The Respondent uses a privacy shield and although use of a privacy or proxy registration service is not in itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. In this instance, it suggests an intention to increase the difficulty for the Complainant in identifying the Respondent, which does not reflect good faith.
The Complainant has conducted thorough searches to try to establish whether the Respondent would have any rights in the name ELECTROLUX in conjunction with similar goods and services for which the trademark ELECTROLUX is registered. The Complainant cannot find any evidence that the Respondent has any registered rights in the name ELECTROLUX or has become known by the name ELECTROLUX.
The Domain Name is being used in bad faith:
The Respondent intentionally chose the Domain Name based on a registered and well-known trademark in order to use it for non-legitimate purposes - creating fraudulent email addresses phishing for funds from the Complainant.
In the Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, the Panel held that registration and passive holding of a domain name which has no other legitimate use and clearly references a complainant’s trademark may constitute registration and use in bad faith. In this case, it is clear that the Respondent has registered the Domain Name in bad faith by intentionally adopting the Complainant’s widely known mark in violation of the Complainant’s rights. The apparent lack of active use of the Domain Name, without any active attempt to sell or to contact the trademark holder, does not prevent a finding of bad faith.
The Respondent should be treated as having registered and used the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant has referred to International Trademark Registration No. 1126087 for ELECTROLUX ULTRAPOWER. The Complainant has a number of other registrations including, as a search of the EUIPO’s database shows, EUTM Trademark Registration No. 000077925 for ELECTROLUX (with a registration date of September 16, 1998).
The Complainant clearly has rights in the ELECTROLUX trademark.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s ELECTROLUX trademark but with the numerical “0” substituted for the letter “o”. These characters are visually similar but as the ELECTROLUX trademark and the Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The ELECTROLUX trademark is clearly recognizable within the Domain Name. The only real issue is therefore whether the substitution of the numerical “0” for the letter “o” renders the Domain Name something other than confusingly similar to the Complainant’s ELECTROLUX trademark. Clearly, it does not and was most probably not intended to when the Domain Name was chosen.
The Panel finds that the Domain Name is confusingly similar to the ELECTROLUX mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding. The answer to that question must be a resounding “No”. It is difficult to conceive of any argument that could be advanced in the circumstances that would assist the Respondent. This is a clear case of typosquatting.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent used a privacy service to disguise its identity and also the fact that it had used the identity of a third party to register the Domain Name. Use of a privacy service is not in and of itself an indication of bad faith but combined with other factors, for example, concealment of the identity of the true registrant, use of a privacy service may well be a factor in such a finding.
Because of the diligence of the Complainant, the Respondent has not been able to use to any great degree, or at all, the Domain Name. It would be perverse if, because of non-use, a respondent could be allowed to continue to hold a domain name which is confusingly similar to a trademark owned by another and in which it had no legitimate rights or interests. This is particularly so where, as is the case here, the Respondent could use the Domain Name at some point in the future for nefarious purposes. Indeed, past UDRP panels have found that the absence of so-called active use e.g., a domain name resolving to a website (even without any attempt to sell or to contact the trademark holder) does not prevent a finding of bad faith. All the circumstances of a case must be considered so as to determine whether a respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed and the registrant's concealment of its identity. These appear to be precisely the circumstances in this case but with the added factors (supporting a finding of bad faith) of the registration being a clear case of typosquatting and the possibility of illegitimate use being raised by the Complainant as a distinct possibility.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <electr0lux.com> be transferred to the Complainant.
Further, the Panel is of the view that no purpose can be served by including the named Respondent in this decision and as noted above, has redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the Domain Name that includes the named Respondent, and has authorized the Center to transmit the Annex to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex 1 shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
Date: May 26, 2017