Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Jin Yuan of Minguan, Anhui Province, China.
The disputed domain name <yilaikesi.net> is registered with Bizcn.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2013. On July 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 12, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, Complainant confirmed its request that English be the language of the proceedings. Respondent did not comment on the language of the proceedings 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 Respondent of the Complaint, and the proceedings commenced on July 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 8, 2013.
The Center appointed Yijun Tian as the sole panelist in this matter on August 20, 2013. 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.
Complainant, Aktiebolaget Electrolux, is a company incorporated in Stockholm, Sweden. Complainant is a world leading producer of appliances and equipment for kitchen and cleaning, which was founded in 1901 (Annex 8 to the Complaint), selling more than 40 million products to customers in 150 countries every year. In 2009, Complainant had sales of SEK 109 billion and 51,000 employees.
Complainant has exclusive rights in the ELECTROLUX marks globally. Complainant is the exclusive owner of well-known registered trademarks ELECTROLUX in more than 150 countries, including China (since 1996; see Annex 6 to the Complaint). Complainant has also registered the ELECTROLUX in Chinese characters 伊莱克斯 as a trademark in China since 1999 (see Annex 6C to the Complaint). Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 generic Top Level Domains (“gTLDs”) and country code Top Level Domains (ccTLDs) worldwide, among these: <electrolux.com.cn>, <electrolux.com> and <electrolux.co.uk> (Annex 7 to the Complaint).
Respondent is Jin Yuan of Minguan, Anhui Province, China. The disputed domain name <yilaikesi.net> was registered to Respondent on May 3, 2011, long after the ELECTROLUX marks became internationally well-known (Annex 12 to the Complaint).
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
- The dominant part of the disputed domain name <yilaikesi.net> reproduces Complainant’s trademark ELECTROLUX phonetically in its entirety, which has been registered by Complainant as a trademark and domain names in numerous countries all over the world, including in Chinese characters (Annex 6 to the Complaint).
- The term “yi lai ke si” is the transliteration of Complainant’s trademarks ELECTROLUX or 伊莱克斯. It shall also be noted that Complainant has already applied for a trademark registration for the term “Yi Lai Ke Si” (Annex 13 to the Complaint).
- Although Complainant does not yet have a trademark registration for the term “Yi Lai Ke Si”, it is well established in previous UDRP cases that domain names comprising phonetic transliterations of foreign language trademarks are confusingly similar to such trademarks.
- Anyone who is conversant in the Chinese language is likely to conclude that “Yi Lai Ke Si”most likely refers to Complainant’s registered trademark.
- This is also apparent given the content of the website associated with the disputed domain name which reproduces the official Electrolux website (Annexes 9 and 10 to the Complaint).
- The fame of the ELECTROLUX trademark has been confirmed in previous UDRP decisions.
- The addition of the gTLD “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity of the trademarks.
- Anyone who sees the disputed domain name is bound to mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant.
- By using “Yi Lai Ke Si” as a dominant part of the disputed domain name, Respondent exploits the goodwill and the image of the ELECTROLUX or 伊莱克斯 trademark, which may result in dilution and other damage for Complainant’s trademark.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
- Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization has been given by Complainant to Respondent, to use the trademark.
- Respondent registered the disputed domain name on May 3, 2013. The mere registration of a disputed domain name does not give the owner a right or a legitimate interest in respect of the disputed domain name.
- Respondent has not any registered trademarks or trade names corresponding to the disputed domain name. Respondent has not been using the word “electrolux” or “Yi Lai Ke Si” in any other way that would give him any rights in the name, and may not claim any rights established by common usage.
- Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is currently connected to a website offering several Electrolux products for sale as well as services for Electrolux products (Annex 10 to the Complaint).
- Respondent is misleading Internet users to a commercial website and consequently, Respondent is tarnishing the trademark ELECTROLUX. Respondent is trying to sponge off Complainant’s world famous trademark.
- Respondent does not adequately disclose the relationship, or lack thereof, between Respondent and Complainant and does therefore conveying the false impression that Respondent is an authorized service center for Complainant’s products.
- There is no visible disclaimer that the website is not endorsed or sponsored by Complainant to explain the non-existing relationship with the trademark holder.
- The website resolved by the disputed domain name also contains the ELECTROLUX logotype, which further strengthens the impression that there is a connection between Respondent and Complainant.
- Respondent has no rights or legitimate interests in respect of the disputed domain name.
(c) The disputed domain name was registered and is 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 whole Community and throughout the world.
- The awareness of the trademark is to be considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations comprising the trademarks 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 and also what made Respondent register the disputed domain name here.
- Complainant sent Respondent a cease and desist letter by email on February 13, 2013 (see Annex 12 to the Complaint). [The Panel assumed that Complainant is referring to Annex 11 to the Complaint rather than Annex 12.] Despite a reminder sent, no response was ever received. It has been mentioned in earlier disputes that “the failure of Respondent to respond to the letter of demand from Complainant further supports an inference of bad faith”.
- The disputed domain name is currently connected to a website offering several Electrolux/伊莱克斯 products for sale as well as services for Electrolux/伊莱克斯 products (Annex 10 to the Complaint). Respondent is using the disputed domain name to intentionally attempt to attract, for “commercial gain”, Internet users to the websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
- Respondent must be considered to have registered and be using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
The language of the registration agreement for the disputed domain name 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 Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:
(a) Complainant has sent the cease and desist letter in English, and Respondent has never taken the trouble to answer, neither to reply to the issues raised in the letter, nor to state that he does not understand the content.
(b) If he had not understood the content of the cease and desist letter, the natural thing would have been to send a short email stating that he did not understand the content of the letter. Respondent has just ignored all attempts to solve this issue amicably.
(c) If a registrant did not understand and was in good faith he would reply to any of the communication asking for clarification.
(d) It would be cumbersome and to Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings 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 proceedings. 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 proceedings 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 (“WIPO Overview 2.0”) further states:
“in certain situations, where Respondent 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 from Sweden, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the website at the disputed domain name include Latin characters “electrolux” and English phrase “Thinking of you” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds adequate grounds in the present proceeding to accept Complainant’s request and to proceed in English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <yilaikesi.net> is registered in Latin characters, rather than Chinese script; (b) Complainant has sent the cease and desist letter in English, and Respondent has never answered, neither to reply to the issues raised in the letter, nor to state that he does not understand the content; (c) the website at the disputed domain name is a mainly Chinese-based website, but the webpages do contain some English words, such as “Thinking of you” (which is next to Electrolux logo) and “Web Design Yuzhiguo” in the homepage of Respondent’s website (Annex 10 to the Complaint); (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent 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 proceedings 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 proceedings, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
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:
The Panel finds that Complainant has rights in the ELECTROLUX marks acquired through registration. The ELECTROLUX marks have been registered worldwide including in China, and Complainant has also registered the ELECTROLUX in Chinese characters 伊莱克斯 as a trademark in China since 1999. Complainant has a widespread reputation as a world leading producer of appliances and equipment for kitchen and cleaning (Annex 8 to the Complaint), selling on the order of 40 million products to customers in 150 countries every year.
The dominant part of the disputed domain name <yilaikesi.net> reproduces Complainant’s trademark ELECTROLUX phonetically in its entirety, which has been registered by Complainant as a trademark and domain names in numerous countries all over the world, including in Chinese characters 伊莱克斯 (Annex 6 to the Complaint). The term “yi lai ke si” is the transliteration of the trademarks ELECTROLUX or 伊莱克斯.
In previous UDRP cases, the Panels have held that domain names comprising phonetic transliterations of foreign language trademarks are confusingly similar to such trademarks. For example, in Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司, WIPO Case No. D2007-0934 where the disputed domain name concerned <danfosi.com>, the Panel held that:
“[…] the Complainant has established its rights in the DANFOSS marks in many countries including China […] also registered the mark DANFOSS in the Chinese characters of “丹佛斯” in China. The English word “danfosi” is the transliteration of DANFOSS or “丹佛斯” in Han Yu Pin Yin (“汉语拼音”), the phonetic representation of the Chinese characters in English. Although the disputed domain name <danfosi.com> is visually different from the Complainant’s trade mark DANFOSS, it is nevertheless confusingly similar to the Complaint’s trade mark as the disputed domain name reproduces the Complainant’s trade mark DANFOSS phonetically in its entirety”.
The Panel further concluded that: “[a]nyone who is conversant in the Chinese language is likely to conclude that DANFOSI probably refers to “丹佛斯” – the Chinese mark of DANFOSS. Comparing the disputed domain name and the Complainant’s mark, the Panel finds that they are confusingly similar.”
The same reasoning may also apply in the present case. “Yi lai ke si” is the transliteration of ELECTROLUX or 伊莱克斯 in Han Yu Pin Yin (“汉语拼音”) - the phonetic representation of the Chinese characters in English. As such, anyone who is conversant in the Chinese language is very likely to conclude that “yi lai ke si” refers to Complainant’s registered trademark 伊莱克斯. It is also noteworthy that the content of the website resolved by the disputed domain name reproduces the official Complainant’s website (Annexes 9 and 10 to the Complaint). It may arguably further increase the likelihood of confusion.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
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 of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the 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; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant is the exclusive owner of famous and well-known registered trademarks ELECTROLUX and in more than 150 countries (see Annex 6 to the Complaint), including China (registration of ELECTROLUX in China since 1996; registration of trademark 伊莱克斯 in China since 1999 – see Annex 6C to the Complaint), which long precedes Respondent’s registration of the disputed domain name (May 3, 2011).
According to Complainant, Complainant is a world leading producer of appliances and equipment for kitchen and cleaning (Annex 8 to the Complaint), selling more than 40 million products to customers in 150 countries every year. In 2009, Complainant had sales of SEK 109 billion and 51,000 employees.
Moreover, Respondent is not an authorized dealer of Electrolux branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610 Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “yilaikesi”, “伊莱克斯” and “electrolux” in its business operation or the use of the ELECTROLUX marks and design on its website (without disclaimer or other clarifying details). By contrast, Respondent’s website contains a Chinese introduction on the history and major products of Complainant and other contents which is same with Complainant’s official websites. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent 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 Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <yilaikesi.net> on May 3, 2011. The disputed domain name reproduces Complainant’s trademark ELECTROLUX phonetically in its entirety, and is identical or confusingly similar to Complainant’s ELECTROLUX marks (as discussed above).
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, the disputed domain name <yilaikesi.net> is connected to the homepage of a service center called Suzhou Electrolux Service Web, which appears to be an official service center endorsed or sponsored by Complainant. And Respondent is currently using this website to offer several Complainant’s products for sale and as well as services for Complainant’s products (Annex 10 to the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name in light of the Complainant’s prima facie case. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.
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 Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the ELECTROLUX and 伊莱克斯 marks with regard to its products and services. Complainant has registered its ELECTROLUX marks internationally, including registration in China (ELECTROLUX marks since 1996; and 伊莱克斯 marks since 1999). Moreover, the disputed domain name <yilaikesi.net> is connected to the homepage of a service center called Suzhou Electrolux Service Web, which appears to be an official service center endorsed or sponsored by Complainant. Respondent is currently using this website to offer several Electrolux products for sale and as well as services for Electrolux products (Annex 10 to the Complaint). Respondent would likely not have advertised products or services purporting to be Electrolux products or service on the website if it was unaware of Complainant’s reputation. In other words, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the ELECTROLUX/伊莱克斯 mark is not one that traders 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, Respondent has 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”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s branded products or services.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering purportedly Complainant’s Electrolux branded products and services without authorization. Complainant claimed that Respondent is using the disputed domain name to intentionally attempt to attract, for “commercial gain”, Internet users to the websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
To establish an “intention for commercial gain” for the purpose of this Policy, 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 and 伊莱克斯 marks (as well as the content on the website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved (see Annexes 9 and 10 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the ELECTROLUX/伊莱克斯 marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are likely led to believe that the website at “www.yilaikesi.net” is either Complainant’s site or the site of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <yilaikesi.net> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: September 10, 2013