The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Ong HOANG LY PHUONG of TP HCM, Vietnam.
The disputed domain name <electroluxsaigon.com> (the “Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On July 11, 2016, the Center sent an email communication to the parties in both Vietnamese and English regarding the language of the proceeding. On July 11, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in both Vietnamese and English, and the proceeding commenced on July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2016.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on August 22, 2016. 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, AB Electrolux, is a Swedish joint stock company founded in 1901. The Complainant is one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products, who are selling many home and professional appliances to customers in 150 countries every year, including Viet Nam. In 2014, Electrolux had sales of SEK 112 billion and about 60,000 employees.
The Complainant is the owner of a number of international registered trademarks ELECTROLUX, both in word and figurative forms, alone and in combination with other elements, in several classes in more than 150 countries all over the world. The Complainant further evidenced that it owns Vietnamese Trademark Registration No. 13319 dated September 14, 1994, and International Trademark Registration No. 836605 registered in 2004, both of these trademarks predate the registration of the Disputed Domain Name.
The Complainant also owns numerous domain names under generic Top-level Domains (“gTLD”) and country-code Top-level Domains (“ccTLD”) containing the term “electrolux”, one of which is the domain name <electrolux.vn> created on June 1, 2006.
Finally, through its extensive use, the Complainant has gained over the years substantial reputation internationally for its Electrolux products, and the trademark ELECTROLUX may be considered as a widely known trademark for appliances and equipment for kitchen, cleaning and outdoor use.
The Respondent registered the Disputed Domain Name <electroluxsaigon.com> on December 4, 2014. The website under the Disputed Domain Name has been under operation for promotion of the Respondent’s services and selling goods of all types under the Electrolux brand.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent a cease-and-desist letter on April 4, 2016 and a reminder on April 20, 2016, in which they asked for, amongst others, a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the Complainant is and has been for many years the right holder of the trademark ELECTROLUX in several classes in numerous countries worldwide, including in Viet Nam. The Electrolux brand is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. The trademark well predates the Respondent’s registration of the Disputed Domain Name.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, as it comprises the term “electrolux”, which is identical to the trademark in its entirety, and the addition of the Vietnamese city name “Saigon”, a geographical wording, would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Finally, the Complainant submits that the addition of the gTLD “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the Respondent is using the Disputed Domain Name incorporating the Complainant’s trademark to attract Internet users to its website where it offers repair services and selling major appliances such as Electrolux refrigerator, washing machines etc., by arguing that (i) the Complainant has a clear agreement with all its authorized partners that it is strictly forbidden for the licensee’s / distributors of the Complainant to register domain names incorporating the Complainant’s trademark; (ii) the Complainant has no agreement with the Respondent and grants neither license nor authorization of any other kind to the Respondent for the registration and use of the Disputed Domain Name incorporating the Complainant’s trademark; and (iii) the Respondent’s prominent use of the Complainant’s stylized ELECTROLUX logo on the Disputed Domain Name leads to the belief that the Disputed Domain Name is in a connection with the Complainant or the Respondent has some official or authorized link with the Complainant for the purposes of repairs and services within Viet Nam.
Further, the Complainant refers to the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and submits that the Respondent’s conduct does not meet the Oki Data criteria on three elements: (i) the Respondent does not publish a disclaimer on the challenged page; (ii) the Respondent is depriving the Complainant of reflecting its own mark in the Disputed Domain Name; and (iii) the Respondent presents themselves as the trademark owner by displaying the ELECTROLUX logo-typed trademark on the website.
Finally, the Complainant submits that the Respondent’s use of the Disputed Domain Name cannot be considered as legitimate use by arguing that (i) the Respondent was aware of the Complainant’s trademark prior to the acquisition of the Disputed Domain Name and the establishment of the Respondent’s website; and (ii) the Respondent is not known by the Disputed Domain Name, nor does the Respondent claim to have made legitimate, noncommercial use of the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that the Complainant first tried to contact the Respondent on April 4, 2016 through a cease-and-desist letter, in which the Complainant requested, amongst others, a voluntary transfer of the Disputed Domain Name. Despite the Complainant’s reminder on April 20, 2016, the Respondent has not yet replied, which can be considered relevant in a finding of bad faith.
The Complainant further argues that the Respondent has never been granted permission to register the Disputed Domain Name and the Respondent intentionally chose the Disputed Domain Name based on a registered and well-known trademark in order to generate more traffic to its own business. In addition, the Respondent does not disclose on the website at the Disputed Domain Name the non-existing relationship between it and the Complainant. Consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website under the Disputed Domain Name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website.
The Complainant also submits that the Respondent’s bad faith registration and use of the Disputed Domain Name is inferred by arguing that (i) it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the Disputed Domain Name registration as ELECTROLUX is a well-known trademark in the home appliance industry including in Viet Nam; and (ii) the Respondent never replied to the Complainant’s cease-and-desist letter.
Finally, the Complainant contends that the Respondent’s conduct can be regarded to corner the market preventing the Complainant from operating the Disputed Domain Name and the Respondent represents itself as the trademark owner by displaying the Complainant’s logo multiple times on the website.
The Respondent did not reply to the Complainant’s contentions.
(i) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement used was Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated July 11, 2016 in English and Vietnamese, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the proceeding. On July 11, 2016, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any request.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to the nationality of the parties; the fact that the Complainant, a Swedish entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its decision in English.
(ii) The Respondent’s Failure to Respond
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ELECTROLUX, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer kitchen and cleaning appliances for both consumers and professional users worldwide.
Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known ELECTROLUX mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the geographical term “saigon”, which can be written with tone marks as “sài gòn” in Vietnamese to indicate the former name of Ho Chi Minh City, Viet Nam.
The Panel finds that “electrolux” remains the dominant element in the Disputed Domain Name. It is well established that the addition of geographical terms (such as “saigon”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said suffix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp, WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien, WIPO Case No. D2012-2320).
Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for the first element purposes (see, e.g.,, Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ELECTROLUX trademark, and the first element under paragraph 4(a)(i) of the Policy is established.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark ELECTROLUX.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, supra :
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other prior UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524).
However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria. On the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant. Further, the use of the Complainant’s logo-typed trademark on the website may be further evidence of the Respondent’s intention to create an impression that the Respondent is the Complainant or a false association with the Complainant. For all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s ELECTROLUX trademark has been registered on a worldwide basis. The Complainant’s ELECTROLUX trademark has been in use in, among other countries, Viet Nam where the Respondent resides.
The Disputed Domain Name comprises the ELECTROLUX trademark in its entirety, adding only the geographical term “saigon”, which is the former name of Ho Chi Minh City, Viet Nam. “Electrolux” is being used in the Complainant’s ELECTROLUX trademark, trade name, and domain names <electrolux.com>, <electrolux.vn>, which all well predate the registration of the Disputed Domain Name.
Also, the Panel finds that given the fact that the Complainant’s ELECTROLUX trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark without knowledge of the trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment, WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment, supra.).
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. Given the use of the Disputed Domain Name, the Respondent obviously knew of the Complainant and its ELECTROLUX trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
In this respect, the Panel finds that the Respondent was aware of the Complainant’s rights in the trademark ELECTROLUX and the associated products and services at the time of the registration of the Disputed Domain Name.
Further, on the date of this Decision, the Panel accessed the Disputed Domain Name and found that it resolves to an active website being used for promoting the Respondent’s services and selling certain kinds of machines branded with the Complainant’s trademark.
In this regard, the Panel also finds that in addition to the adoption of the Complainant’s trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s logo-typed trademark on the website and placed no statement on the lack of its relationship with the Complainant.
With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them into thinking that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent (see in the same way Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031).
In addition, the Panel notes the fact that the Respondent received a cease-and-desist letter from the Complainant and did not respond to it. Instead, the Respondent is continuing to use the Disputed Domain Name for an active website, despite the fact that it was notified of the commencement of the UDRP proceeding. This is further indication of the Respondent’s bad faith and its intention to capitalize on the reputation and goodwill of the Complainant’s trademark even after the Respondent was informed by the Complainant and the Centre of such behavior.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.
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, <electroluxsaigon.com>, be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: August 31, 2016