WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. zhutao, Ma Yun

Case No. D2011-1651

1. The Parties

Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.

Respondents are zhutao and Ma Yun of China.

2. The Domain Names and Registrar

The disputed domain names <electrolux-professional.net> and <electroluxus.com> (the “Domain Names”) are registered with Hangzhou E-Business Services Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2011. On September 29, 2011, the Center transmitted by email to Hangzhou E-Business Services Co., Ltd. a request for registrar verification in connection with the Domain Names. On October 8, 2011, Hangzhou E-Business Services Co., Ltd. transmitted by email to the Center its verification response confirming that Respondents are listed as the registrant and providing the contact details. On October 10, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On October 10, 2011, Complainant confirmed its request that English be the language of proceeding. Respondents did not comment on the language of proceeding by the specified due date.

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 Respondents of the Complaint, and the proceedings commenced on October 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2011. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on November 9, 2011.

The Center appointed Yijun Tian as the sole panelist in this matter on November 30, 2011. 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

A. Complainant

Complainant, AB Electrolux, is a company incorporated in Stockholm, Sweden. It was founded in 1901 and registered as a Swedish company in 1919 (see Annex 7 to the Complaint), and is a world leading producer of appliances and equipment for kitchen and cleaning.

Complainant is the owner of the ELECTROLUX trade marks (the “ELECTROLUX Marks”) in over 100 countries, including European Union (since September 16, 1998) and China (Annex 5 to the Complaint). The trademark ELECTROLUX was registered (1998) long before the registration of the Domain Names (2011). Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, such as <electrolux.com>, <electrolux.net>, <electrolux.info>, <electrolux.org> and <electrolux.cn>, etc. (Annex 6 to the Complaint).

B. Respondents

The Domain Name <electrolux-professional.net> was registered on March 15, 2011, and the Domain Name <electroluxus.com> was registered on March 15, 2011, which are long after Complainant operated web sites with URL which contain the ELECTROLUX mark (i.e. <electrolux.com.ni> was registered on September 30, 2006; see Annex 6 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

The dominant part of two Domain Names in dispute comprises the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by Complainant as a trademark and domain names in numerous countries all over the world. (Annex 5 and 6 to the Complaint).

The Domain Names are confusingly similar to the trademark ELECTROLUX. The fame of the trademark has been confirmed in previous UDRP decisions.

The addition of the suffixes “us” or “professional”, are not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark.

The addition of the top-level domains (TLDs) “.com” or “.net” do not have any impact on the overall impression of the dominant portion of the Domain Names and are therefore irrelevant to determine the confusing similarity of the trademark.

With reference to the reputation of the trademark ELECTROLUX there is a considerable risk that the public will perceive Respondents’ Domain Names either as domain names owned by Complainant or that there is some kind of commercial relation with Complainant.

By using ELECTROLUX as a dominant part of the Domain Names, Respondents exploit the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant’s trademark.

(b) Respondents have no rights or legitimate interests in respect of the Domain Names;

Respondents do not have any registered trademarks or trade names corresponding to the Domain Names; and no license or authorization of any other kind, has been given by Complainant to Respondents, to use the trademark.

Respondents have not been using “electrolux” in any other way that would give him any legitimate rights in the name, and may not claim any rights established by common usage.

Respondents are not using any of the Domain Names in connection with a bona fide offering of goods or services.

The Domain Names are currently connected to web sites displaying sponsored links (Annex 9 to the Complaint). By doing this, Respondents are misleading Internet users to a commercial web site and is tarnishing the trademark ELECTROLUX.

Respondents are trying to sponge off Complainant’s world famous trademark.

(c) The Domain Names were registered and are being used in bad faith.

The trademark ELECTROLUX belonging to Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.

The number of third party domain name registrations comprising the trademark in combination with other words has skyrocketed the last years. The considerable value and goodwill of the mark ELECTROLUX is most likely a large contribution to this.

Complainant first tried to contact Respondents on June 21, 2011 through a cease and desist letter, by e-mail (see Annex 10 to the Complaint). Respondents stated that the Domain Names were registered by a client of him and claimed that the client wanted USD 1,000 per domain name if they should transfer the Domain Names over to Complainant.

The Domain Names are currently connected to pay per click websites hosted by “www.sedo.com”. Respondents have also placed the Domain Names on sale on “www.sedo.com” with the listed sale price EUR 6,200.

Respondents are using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to commercial websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites.

Respondents must be considered to have registered and be using the Domain Names in bad faith.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreements for the Domain Names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondents to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant has sent a cease and desist letter in English, and have received reply in English from a representative of Respondents. Therefore Respondents are most likely familiar with the English language or at least has someone that can help them to communicate and explain in English.

(b) It would be cumbersome and to Complainant’s disadvantage to be forced to translate the entire Complaint into another language while Respondents has responded in English and therefore are aware and understand the English language.

Respondents did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where Respondents can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company incorporated in Sweden, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the Domain Names include English words “us” and “professional” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondents appear to be Chinese individuals and are thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondents may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Names <electrolux-professional.net> and <electroluxus.com> are registered in Latin characters and particularly in English language, rather than Chinese script; (b) Complainant has sent a cease and desist letter in English, and have received reply in English from a representative of Respondents (Annex 10 to the Complaint); (d) Respondents’ websites at the disputed Domain Names appear entirely in the English language, and appears to have been directed to Internet users in worldwide (particularly English speakers) rather than Chinese speakers; (see Annex 9 to the Complaint); (e) the Center has notified Respondents of the proceedings in both Chinese and English, and Respondents have indicated no objection to Complainant’s request that English be the language of the proceeding; (f) the Center informed Respondents that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Respondents’ Consolidation

A preliminary issue also arises in this case, on which a Panel determination is required, as to whether the two Domain Names are in fact registered by the same domain name holder (pursuant to paragraph 3(c) of the UDRP Rules, which permits complaints which relate to more than one domain name, provided that the domain names are registered by the same domain-name holder), or if not, whether the case may in any event be one which is suitable for consolidation pursuant to Panel powers enumerated under the Rules paragraph 10(e). (For a further discussion of relevant consolidation principles, see also paragraph 4.16 of the WIPO Overview 2.0, and cases cited therein.)

The Panel in the present case has taken note of the Complainant’s submissions that the two Respondents, though presently appearing to be different entities in the public WhoIs, have previously shared the same WhoIs-listed contact information. The Panel has also taken note of the Complaint’s submissions that the two Domain Names are registered through the same registrar, were registered on the same date, apparently resolve to an identical parking webpage, and have been offered for sale at the same price. The Panel has also noted that none of these factual submissions have been disputed by either Respondent.

In the circumstances, the Panel is satisfied that, for the purpose of the present UDRP dispute, it is appropriate to proceed on the basis that the holder of the two disputed domain names are in reality either the same entity, or are at the least sufficiently related and to share sufficient commonalities to make this case concerning the two disputed domain names one that is appropriate for consolidation into a single proceeding. The Panel in any event finds it to be both equitable and procedurally efficient in the circumstances to permit such consolidation.

6.3. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred:

(i) the Domain Names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ELECTROLUX Marks acquired through registration. The ELECTROLUX Marks have been registered worldwide including in China (See Annex 5 to the Complaint) and it has a widespread reputation in the field of producing appliances and equipment for kitchen and cleaning.

The Domain Names <electrolux-professional.net> and <electroluxus.com> comprise the ELECTROLUX Mark in its entirety. The Domain Name <electrolux-professional.net> only differs from the ELECTROLUX Marks by the addition of “-” and the word “professional”. The Domain Name <electroluxus.com> only differs from the ELECTROLUX Mark by the addition of the Latin characters “us”. The Panel finds that these do not eliminate the similarity between Complainant’s registered ELECTROLUX Marks and the Domain Names.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).

Mere addition of the descriptive term “professional” or Latin characters “us” (abbreviation of the United States) as a suffix to Complainant’s mark fails to distinguish. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Names and the ELECTROLUX Marks in which Complainant has rights.

The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondents have rights or legitimate interests in the Domain Names:

(i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondents have commonly been known by the Domain Names; or

(iii) legitimate noncommercial or fair use of the Domain Names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the ELECTROLUX Marks in over 100 countries and regions, including European Union (since September 16, 1998) and China (Annex 5 to the Complaint). Complainant is currently selling more than 40 million products to customers in 150 countries every year. According to the information provided by the Complainant, in 2009, Complainant had sales of SEK 109 billion and 51,000 employees (see Annex 8 to the Complaint).

Moreover, according to Complainant, Respondents are not authorized dealers of Electrolux-branded products. Complainant has therefore established a prima facie case that Respondents have no rights or legitimate interests in the Domain Names and thereby shifted the burden to Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondents have no rights or legitimate interests in the Domain Names:

(a) There has been no evidence adduced to show that Respondents are using the Domain Names in connection with a bona fide offering of goods or services. Respondents have not provided evidence of legitimate use of the Domain Names or reasons to justify the choice of the word “electrolux” in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondents to use the ELECTROLUX Marks or to apply for or use any domain name incorporating the ELECTROLUX Marks;

(b) There has been no evidence adduced to show that Respondents have been commonly known by the disputed Domain Names. There has been no evidence adduced to show that Respondents have any registered trademark rights with respect to the Domain Names. The Domain Names <electrolux-professional.net> and <electroluxus.com> were both registered on March 15, 2011, which are long after Complainant operated web sites with URL which contain the ELECTROLUX mark (i.e. <electrolux.com.ni> was registered on September 30, 2006; see Annex 6 to the Complaint). The Domain Names are identical or confusingly similar to Complainant’s ELECTROLUX Marks.

(c) There has been no evidence adduced to show that Respondents are making a legitimate noncommercial or fair use of the Domain Names.

The Panel finds that Respondents have failed to produce any evidence to establish rights or legitimate interests in the Domain Names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Names in bad faith, namely:

(i) circumstances indicating that Respondents have registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondents’ documented out-of-pocket costs directly related to the Domain Names; or

(ii) Respondents have registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondents have engaged in a pattern of such conduct; or

(iii) Respondents have registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondents have registered and used the Domain Names in bad faith.

a). Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ELECTROLUX Marks with regard to its products. Complainant has registered its ELECTROLUX Marks over 100 countries, including China. Based on the information provided by Complainant, Complainant is currently selling more than 40 million products to customers in 150 countries every year, and in 2009, had sales of SEK 109 billion and 51,000 employees (see Annex 8 to the Complaint). It is not conceivable that Respondents would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names (in March 2011). The Panel therefore finds that the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondents have chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”

Thus, the Panel concludes that the Domain Names were registered in bad faith with the intent to create an impression of an association with Complainant’s ELECTROLUX Marks.

b). Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar Domain Names, Respondents have “intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites”. Complainant claimed that “the Domain Names are currently connected to websites containing sponsored links” (Annex 9 to the Complaint), and “the Domain Names are currently connected to pay per click websites hosted by SEDO.COM. Respondent has also placed the Domain Names on sale on SEDO.com with the listed sale price EUR 6200”.

To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the ELECTROLUX Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the Domain Names are resolved. In other words, Respondents have through the use of a confusingly similar domain names created a likelihood of confusion with the ELECTROLUX Marks. Noting also that apparently no clarification as to Respondents’ relationship to Complainant is made on the homepages of the Domain Names, potential partners and end users are led to believe that the Domain Names are either Complainant’s sites or the sites of official authorized partners of Complainant, which they are not. Moreover, Respondents did not respond formally to the Complaint. The Panel therefore concludes that the Domain Names were used by Respondents in bad faith.

In summary, Respondents, by choosing to register and use Domain Names, which are confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondents, the choice of the Domain Names and the conduct of Respondents as far as the websites on to which the Domain Names resolve are indicative of registration and use of the Domain Names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <electrolux-professional.net> and <electroluxus.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: December 21, 2011