WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Registration Private, Domains By Proxy, LLC / Gustavo Souza Goncalves
Case No. D2017-1234
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 ("United States") / Gustavo Souza Goncalves of Belo Horizonte, Minas Gerais, Brazil.
2. The Domain Name and Registrar
The disputed domain name <redeautorizadaelectrolux.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2017, 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 June 29, 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 July 3, 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 July 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 26, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on July 28, 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. Factual Background
The Complainant is a Swedish producer and seller of appliances and equipment for kitchen, cleaning, and floor care products. It has sold goods, particularly vacuum cleaners, in Sweden and abroad, since the early twentieth century. Its flagship brand is ELECTROLUX, for which the Complainant owns many trademarks in numerous jurisdictions around the world and owns a Brazilian trademark for ELECTROLUX, Trademark No. 002521261, where the Respondent resides (together, the "ELECTROLUX Mark"). The Complainant has done substantial business in Brazil through its wholly-owned subsidiary, Electrolux do Brasil S.A.1 Numerous UDRP panels have held that the Complainant has rights in the ELECTROLUX Mark in UDRP cases in which the Complainant successfully challenged domain names incorporating the ELECTROLUX Mark including those using the Brazilian country code Top-Level Domain ("ccTLD").
In addition, the Complainant, through its subsidiary, registered a number of domain names under the Brazilian ccTLD containing the term "electrolux", including <electrolux.com.br> and <electrolux-professional.com.br>. These domain names resolve to a website through which potential customers learn about the Complainant's ELECTROLUX Mark and its products and services.
The Respondent registered the Disputed Domain Name on May 15, 2017, long after the Complainant began using its trademark registrations for the ELECTROLUX Mark in jurisdictions around the world. The Disputed Domain Name resolves to a website that uses the ELECTROLUX Mark and logo without authorization, and purports to be an authorized service center to deceive customers into believing that the goods and services are genuine and are being offered by an authorized service center and reseller. In addition to the website to which the Disputed Domain Name resolves, the Respondent owns a domain name that resolves to its own official website at "www.wceservice.com".
Recently the Respondent was involved in another domain name dispute, AB Electrolux v. Washington Souza Goncalves, WIPO Case No. D2017-0361, regarding the domain name <autorizadaelectrolux.com>. The Complainant prevailed, but shortly after the decision was implemented and the domain name transferred to the Complainant, the Respondent registered the Disputed Domain Name.
On November 30, 2016, the Complainant's representative sent a cease-and-desist letter to the Respondent, demanding that the Respondent transfer the Disputed Domain Name to the Complainant. The Respondent did not reply.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's ELECTROLUX Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy Paragraph 4(a)(i) of the Policy, the Complainant must show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It is uncontroverted that the Complainant has established rights in the ELECTROLUX Mark based on both long and continuous use as well as its numerous trademark registrations in jurisdictions around the world for the ELECTROLUX Mark.
The Disputed Domain Name <redeautorizadaelectrolux.com> consists of the ELECTROLUX Mark preceded by the words "rede" and "autorizada", which are Portuguese words meaning "network" and "authorized" in English, and followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
Further, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ELECTROLUX Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent an authorized dealer, agent, distributor, reseller, wholesaler or retailer of goods bearing the ELECTROLUX Mark. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
For an authorized reseller to be deemed bona fide, its offering must meet several requirements. Those include, at minimum, the following:2
- The Respondent must actually be offering the goods or services at issue. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774.
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many resellers. See Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211.
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.3 Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525.
In this case, the Respondent's conduct does not meet these factors. WIPO Overview 3.0, section 2.8.1. Specifically, the Respondent does not use the Disputed Domain Name to sell Complainant's products exclusively, nor does the Respondent use the Complainant's trademark and logo on its website along with a disclaimer. By using the Complainant's trademark and logo on a standalone basis and without a disclaimer, the Panel concludes that the Respondent intended to create a likelihood of confusion with the Complainant's ELECTROLUX Mark as to the source, sponsorship, affiliation, or endorsement of its website. Policy, paragraph 4(b)(iv).
Accordingly, the second element of paragraph 4(a) has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's EELECTROLUX Mark. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to attract customers to its website by using a domain name that is confusingly similar to the Complainant's ELECTROLUX Mark. The Respondent's use of the Disputed Domain Name to resolve to a website that purported to promote services bearing the ELECTROLUX Mark in an attempt to have customers believe that the services were sponsored by the Complainant demonstrates the Respondent's bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the false impression that the Respondent's website was affiliated with or endorsed by the Complainant, or was an authorized reseller, when it is not.
Second, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant's Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the ELECTROLUX Mark, globally and particularly in Brazil.
The continuous and public use of the ELECTROLUX Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Moreover, the use of the Disputed Domain Name by the Respondent to resolve to a website to sell goods in addition to those of the Complainant, to use the Complainant's trademark and logo, and to omit the use of a disclaimer on the website demonstrates that the Respondent registered and is using the Disputed Domain Name in bad faith.
Finally, the Respondent's bad faith can also be inferred from its lack of reply to the cease-and-desist letter sent by the Complainant's counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant
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 <redeautorizadaelectrolux.com> be transferred to the Complainant.
Lynda M. Braun
Date: August 1, 2017
1 The Complainant began producing vacuum cleaners and floor polishers in São Paolo, Brazil in 1950. In 1996, the Complainant strengthened its position in the South American market by acquiring Refripar, the second-largest white goods manufacturer in Brazil, which later became Electrolux do Brasil. Currently, the Complainant is the most profitable Brazilian company in consumer electronics.
3 The Complainant includes as an annex to its Complaint a copy of its standard contract with authorized resellers, under which the resellers are prohibited from registering domain names that include the Complainant's trademarks.