The Complainant is Aktiebolaget Electrolux (AB Electrolux) of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Dmitrij Sukharev, TOV RENKLOD LTD / Internet Invest, Ltd. dba Imena.ua, Whois privacy protection service of Kiev, Ukraine.
The disputed domain names <electrolux-market.com> and <electrolux-market.net> are registered with
Internet Invest, Ltd. dba Imena.ua (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2013. On December 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 6, 2013 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 December 6, 2013. On December 6, 2013, the Center also transmitted the language of the proceedings document to the parties in both English and Russian. On December 6, 2013, the Complainant stated in its email response to the language of proceeding document that it had put forward a language of proceeding request in the Complaint under section IV. Language of Proceedings request and therefore had nothing further to add to it. On the same date, the Center invited the Respondent to comment on this request of the Complainant by December 11 2013. Despite having been invited to do so by the Center, the Respondent did not submit any comment in relation to the language of the proceedings.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint both in English and Russian, and the proceedings commenced on December 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default (both in English and Russian) on January 10, 2014.
The Center appointed Ladislav Jakl as the sole panelist in this matter on January 22, 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.
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919 ( Annex 7 to the Complaint). The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant is also one of the largest producers in the world of similar equipment for professional users. In addition, they are the market leader in many of the individual product categories in which they compete. The Complainant is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year including in Ukraine. The company focuses on innovations that are thoughtfully designed, based on extensive consumer insight, to meet the real needs of consumers and professionals. The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as ELECTROLUX, AEG, AEG-ELECTROLUX. In 2012, the Complainant had sales of SEK 109 billion and 59,150 employees (Annex 8 to the Complaint).
The Complainant provided a list of the registered trademarks (Annex 6 and 6.1 to the Complaint), together with copies of the national Ukrainian trademark owned by the Complainant on which, among others, this Complaint is based. The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The Complainant also owns the Ukrainian trademark for ELECTROLUX registration No. 2651, with priority date November 16, 1989, in classes 3, 7, 9, 11 and 21. The trademark ELECTROLUX was registered long before the registration of the disputed domain names. The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 generic Top-Level Domains (“gTLDs”) and country codes Top-Level-Domains (“ccTLDs”) worldwide, among these: <electrolux.com> (Annex 7 to the Complaint).
The disputed domain names <electrolux-market.com> and <electrolux-market.net> were both registered on January 15, 2013.
The Complainant contends that the disputed domain names <electrolux-market.com> and
<electrolux-market.net> comprise the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. (Annex 6 and 7 to the Complaint). The disputed domain names are confusingly similar to the Complainant’s trademark ELECTROLUX. The addition the hyphens and “market” are not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain names, ELECTROLUX. The addition of the gTLD “.net” and “.com” do not have any impact on the overall impression of the dominant portion of the disputed domain names and is therefore irrelevant to determine the confusing similarity of the trademark. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark ELECTROLUX there is a considerable risk that the trade public will perceive the disputed domain names either as domain names owned by the Complainant or that there is some kind of commercial relationship with the Complainant. By using “electrolux” as a dominant part of the disputed domain names, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage for the Complainant’s trademark.
As to rights or legitimate interests in respect of the disputed domain names, the Complainant essentially contends that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names, that no license or authorization of any other kind to use the trademark has been given by the Complainant to the Respondent. The Respondent registered the disputed domain names on January 15, 2013. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. The Complainant has also not found anything that would suggest that the Respondent has been using the term Electrolux in any other way that would give him any legitimate rights in the disputed domain names. Consequently the Respondent may not claim any rights established by common usage. The Respondent has intentionally chosen the disputed domain names based on a registered trademark ELECTROLUX which connects to websites which are currently at a parking page and redirected to a third party website (Annex 10 to the Complaint). Such landing pages are only according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) permissible under certain limited circumstances, but not when there is no response to the complaint having been filed or a cease and desist letter, and if the registrant has chosen to conceal its identity. These factors combined do not constitute a legitimate interest. The fact is that the Respondent is trying to sponge off the Complainant’s world famous trademark. The Complainant further refers to the UDRP decision Drexel University v. David Brouda, WIPO Case No. D2001-0067, according to which the rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant. The adoption by the Respondent of a domain name identical to the Complainant’s trademark ELECTROLUX inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and the consequential tarnishing of the Complainant’s trademark ELECTROLUX and also the valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so. The Complainant concludes that the Respondent should have no rights or legitimate interests in the disputed domain names.
Furthermore, the Complainant argues that the disputed domain names were registered and are also being used in bad faith, as the trademark ELECTROLUX belonging to the 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 Complainant first tried to contact the Respondent on April 25, 2013 through a cease and desist letter (Annex 11 to the Complaint). The Complainant advised the Respondent that the unauthorized use of the ELECTROLUX trademark within the disputed domain names violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the disputed domain names and offered compensation for the expenses of registration and transfer fees (not exceeding out–of-pocket expenses). No reply was received so the Complainant sent a reminder on June 24, 2013 however without any reply. Since the efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file a Complaint according to the UDRP process. It has been mentioned in earlier disputes that the failure of the Respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith (News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). The Complainant further argues that in the current case the disputed domain names are redirecting the customers to websites which are currently parked. Such passive holding does not in itself constitute a bad faith registration. However, factors such as having a well-known trademark, no response to a cease and desist letter or the Complaint may well suffice to establish a bad faith registration. It is obvious that the Respondent knew of the trademark ELECTROLUX at the time of registration and therefore, the Respondent has entered the registration agreement knowing that it registered the disputed domain names infringing on a third party right. The Respondent is also the owner of the domain name <electrolux-market.com.ua>, which means that the Respondent has registered in total three domain names. The disputed domain names are designed to attract Internet users who are looking for the Complainant’s services and cause confusion with the Complainant’s marks and websites when not landing on an official Electrolux website. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website (Annex 10 to the Complaint). The Complainant concludes that there is no doubt that the Respondent was aware of the rights the Complainant has in the trademark ELECTROLUX and the value of said trademark, at the point of the registrations. There is no connection between the Respondent and the Complainant. By using the disputed domain names the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for its own commercial gain. Consequently by referring to the above-mentioned the Respondent must be considered to have registered and be using the disputed domain names in bad faith. The Respondent is well aware of the reputation and recognition of the Complainant’s trademark ELECTROLUX. The Respondent must have known of the Complainant’s trademark when registering the disputed domain names.
For these reasons, the Respondent registered and is using the disputed domain names in bad faith.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel appointed in this administrative proceeding to issue a decision that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. Paragraph 11(a) of the UDRP provides, that in 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, subject to the authority of the Administrative Panel (once appointed) to determine otherwise. The Respondent did not comment on the language of the proceeding by the specified due date. The Complainant states that it has sent the cease and desist letter in English, and the Respondent has never taken the trouble to answer, neither to reply to the issues raised in the letter, nor to state that it does not understand the content. In the view of the Panel, if the Respondent had not understood the content of the cease and desist letter, the natural thing would have been to send a short email stating that it did not understand the content of the letter. The Complainant further argues that the Respondent has just ignored all attempts to solve this issue amicably. Naturally, if a registrant did not understand and were in good faith he would reply to any of the communication asking for clarification. The disputed domain names incorporate the generic English term “market”. The Respondent is also using the gTLD “.com” which is an international top level domain name that stands for “commercial”. Moreover the Complainant states that the websites associated with the disputed domain names are merely parked and the Internet user can also chose an English version of the websites at the top of the right hand corner. This is an additional element to the nature of the disputed domain names and the websites. Based on this, the Complainant requests that the proceedings be held in English. The Panel, taking in to account all circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein, decides that the language of the administrative proceedings be English (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane, WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov, WIPO Case No. D2011-1636; Groupe Auchan v. xmxzl, WIPO Case No. DC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.
There is no doubt that the disputed domain names <electrolux-market.com> and <electrolux-market.net> comprise the word “electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world. (Annex 6 and 7 to the Complaint). Mere addition of the hyphens and of the descriptive term “market” are not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name “Electrolux”. Mere addition of a descriptive term does not adequately distinguish a domain name from the mark pursuant to the Policy, paragraph 4(a)(i). UDRP panels have held that domain names are likely to be held confusingly similar to established marks if they incorporate the trademark (Wall -Mart Stores, Inc. v. Gerry Sinker, WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold, WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc., WIPO Case No. D2006-0717; Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483; Sanofi-0Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Merrell Pharmaceuticals Inc. v. Daniel Laforge, NAF Claim No. 0420671). As well the inclusion of the gTLD suffix “.com” and “.net” does not avoid confusing similarity of the domain names and trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain names are confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain names. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular without limitation shall demonstrate:
(i) before the Respondent obtained the notice of the dispute, had not used of, or had not made demonstrable preparations to use, the disputed domain names or name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the arguments of the Complainant that it has not found that the Respondent, before it obtained notice of the proceedings, has any registered trademarks or trade names corresponding to the disputed domain names and that no license or authorization of any other kind to use the trademark has been given by the Complainant to the Respondent. In the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear to the Panel that no actual or contemplated bona fide or legitimate use of the disputed domain names could be claimed by the Respondent (Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488; Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh., WIPO Case No. D2003-0494).
The Respondent has not been commonly known by the disputed domain names. The Respondent registered the disputed domain names on January 15, 2013, while the Ukraine trademark ELECTROLUX of the Complainant was registered on November 30, 1993, with former priority date of November 16, 1989. The mere registration of a domain name does not give the registrant a right or a legitimate interest in respect of the domain name (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg, WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). And moreover, it is likely that the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the Complainant’s trademark and that the disputed domain names clearly alludes to the Complainant. to the Panel accepts the arguments of the Complainant that the adoption by the Respondent of the disputed domain names confusingly similar to the Complainant’s trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and the consequential tarnishing of the Complainant’s trademark ELECTROLUX and also the valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so. The Respondent’s use of the disputed domain names to misdirect Internet users is not a bona fide offering of goods or services, and therefore does not constitute a legitimate noncommercial or fair use of the disputed domain names under the Policy (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which in particular but without limitation, are to be construed as evidence of both registration and use in bad faith. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant argues that the disputed domain names are being registered and used in bad faith, since at the time of the registration the Respondent had knowledge of the Complainant’s well-known trademark ELECTROLUX. The Panel accepts these arguments. The Respondent registered the disputed domain names on January 15, 2013, while the Complainant’s trademarks were filed much previously (Ukraine trademark registration No. 2651, with priority date November 16, 1989). There is no doubt for this Panel that the Respondent has also registered the disputed domain names in order to prevent the owner of the trademark ELECTROLUX from reflecting in a corresponding domain name. Moreover, the Panel notes that the Respondent appears to be using the disputed domain names to attract Internet users seeking for the Complainant’s website, for the Respondent’s own commercial gain and disrupt the business of the Complainant. The disputed domain names are designed to attract Internet users who are looking for the Complainant’s services and cause confusion with the Complainant’s marks and websites when not landing on an official Electrolux website (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049). Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites (Annex 10 to the Complaint).
For the above cited reasons, and in the absence of a rebuttal by the Respondent, the Panel finds that the disputed domain names were registered and are being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 names <electrolux-market.com> and <electrolux-market.net> be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Date: January 30, 2014