Westmore · UDRP DecisionDienmayelectrolux.com
The Panel ordered transfer of <dienmayelectrolux.com>. It found the domain confusingly similar to the Complainant’s ELECTROLUX mark because it incorporated the mark in full with the Vietnamese descriptive terms “Dien” and “May.” The Respondent lacked rights or legitimate interests because it was neither an authorized reseller nor an authorized service provider and used the domain for a website likely to create a false impression of authorization. Bad faith was established from the Respondent’s knowledge of the well-known ELECTROLUX mark and its intentional use of the domain to attract Internet users for commercial gain through confusion concerning affiliation or endorsement.
The timeline behind dienmayelectrolux.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates how a domain combining a well-known appliance mark with local-language product descriptors can reinforce rather than dispel confusion, particularly when it resolves to an unauthorized sales and repair-services website. The case also shows the importance of clear affiliation disclosure and authorization evidence when a respondent invokes or might seek reseller or service-provider legitimacy.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aktiebolaget Electrolux v. Ong Tran Van Minh Case No. D2014-1086 1. The Parties The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden. The Respondent is Ong Tran Van Minh of Ho Chi Minh, Vietnam. 2. The Domain Name and Registrar The disputed domain name <dienmayelectrolux.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2014, 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. 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 the Respondent of the Complaint, and the proceedings commenced on June 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. Email communications were received from the Respondent on July 18, 2014. The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on August 1, 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. 4. Factual Background The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Electrolux, which trades under the brand ELECTROLUX as well as under other brands, sells 40 million products to consumers living in 150 different countries every year. The Complainant is the market leader in many of the individual product categories in which they compete. In 2013, Electrolux had sales of SEK 109 billion and 60,800 employees. The Complainant has provided sufficient evidence showing that it is the owner of the ELECTROLUX mark the registration of which predates the Respondent’s registration of the disputed domain name. It, inter alia , owns following trademark registration in Viet Nam: Mark: ELECTROLUX Registration number: 13319 Class and goods: 7, 9, 11 Filing date: November 26, 1993 Registration date: September 14, 1994 The disputed domain name was registered on April 2, 2012. 5. Parties’ Contentions A. Complainant (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: (a) The disputed domain name <dienmayelectrolux.com> comprises the term “Electrolux”, which is identical to the Complainant’s registered trademark ELECTROLUX in which the Complainant has rights; (b) The fame of the trademark ELECTROLUX has been confirmed in previous UDRP decisions; and (c) The prefixes “Dien” and “May” do not detract from the overall impression because the term “Điện” translates to “electricity” in Vietnamese and the term “Máy” refers to “machine” in said language. (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name: (a) The Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; (b) The disputed domain name is currently connected to a website offering the Complainant’s products, as well as technical support, repair and warranty services of the same; (c) Some of the Electrolux’s products displayed on the website are promoted as used; (d) The Respondent is not an authorized reseller of the Complainant’s products; (e) The Complainant has its own repair and warranty service, as well as technical support, and the Respondent is not a part of those services; (f) No license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the ELECTROLUX trademark; (g) The Complainant’s logotypes are displayed on the website, which further strengthens the impression that there is a connection between the Respondent and the Complainant; and (h) The Respondent does not disclose the relationship, or lack thereof, between the Respondent and the Complainant. (iii) The disputed domain name has been registered and is being used in bad faith: (a) The Complainant’s trademark ELECTROLUX has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world; (b) The Complainant’s trademark registrations in Viet Nam where the Respondent resides were recorded over a decade prior to when the disputed domain name was registered on April 2, 2012; (c) The Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name; (d) The disputed domain name is currently connected to a website offering the Complainant’s new and used products, as well as technical support, repair and warranty services of the same; and (e) The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to its website or its sponsored links, making them believe that the website resolved by the disputed domain name is associated or authorized by the Complainant. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. Two email communications were received, apparently from the Respondent on July 18, 2014, stating that “we’ve changed the information in the website dienmayelectrolux.com”. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. In view of the Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson , WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint). A. Identical or Confusingly Similar The Complainant contends that the disputed domain name <dienmayelectrolux.com> comprises the term “Electrolux”, which is identical to the registered trademark ELECTROLUX, registered by the Complainant as trademarks and domain names in numerous countries all over the world. It also contends that the fame of the trademark ELECTROLUX has been confirmed in previous UDRP decisions, for example; AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 and Aktiebolaget Electrolux v. Agustin Acosta , WIPO Case No. D2010-1968 . The Complainant asserts that the prefixes “Dien” and “May” do not detract from the overall impression because the term “Điện” translates to “electricity” in Vietnamese and the term “Máy” refers to “machine” in said language. The Complainant has provided sufficient evidence showing that it is the owner of the ELECTROLUX mark the registration of which predates the Respondent’s registration of the disputed domain name. Accordingly, the Panel finds that the Complainant’s registrations of the ELECTROLUX mark with the Vietnamese IP Office and in other countries sufficiently establish its rights in the mark pursuant to Policy, paragraph 4(a)(i). The Panel notes that the Respondent adds the descriptive elements “Dien” and “May” which mean “electricity” and “machine” in Vietnamese to the Complainant’s ELECTROLUX mark in the disputed domain name. The Panel holds that the Respondent’s addition of descriptive terms does not distinguish the disputed domain name from the Complainant’s mark under Policy, paragraph 4(a)(i). See Hoffmann-La Roche Inc. v. ML, Matt Leavsi / WhoisGuard, WIPO Case No. D2012-0587 finding “the Domain Name is confusingly similar to the Complainant’s trademark consisting of the Complainant’s ACCUTANE trademark and the generic words ‘buy’ and ‘cheap’.” The Panel holds that the disputed domain name is confusingly similar to the Complainant’s mark ELECTROLUX especially in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne , WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.” The Panel also finds that the “.com” is a descriptive suffix commonly used as a generic Top-Level Domain (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager , WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.” As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 ). The Complainant contends that the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name. It also contends that the disputed domain name is currently connected to a website offering the Complainant’s products, as well as technical support, repair and warranty services of the same. The Complainant asserts that some of the Electrolux’s products displayed on the website are promoted as used. It further asserts that the Respondent is not an authorized reseller of the Complainant’s products. The Complainant submits that the Complainant has its own repair and warranty service, as well as technical support, and the Respondent is not a part of those services. It also submits that no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use the ELECTROLUX trademark. In addition, the Complainant avers that the Complainant’s logotypes are displayed on the website, which further strengthens the impression that there is a connection between the Respondent and the Complainant. The Complainant further contends that the Respondent does not disclose the relationship, or lack thereof, between the Respondent and the Complainant, and thus the Respondent does not qualify to fulfill the requirements for a bona fide offering set out in the often cited Oki Data Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 (the requirements are also included in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)). The Panel agrees that the Respondent is not an authorized reseller of the Complainant’s products nor service provider of the Complainant’s products and has never had a business relationship with the Complainant. Therefore, by operating such a website under the disputed domain name, the Respondent is in effect creating a false impression or is likely to create such a false impression that the Respondent is an authorized reseller of the Complainant’s products or service center for the Complainant’s products without express authority of the Complainant. In the circumstances, the Panel cannot find any justification, right or legitimate interest on the part of the Respondent to the words comprising the disputed domain name or to the disputed domain name itself. Under the circumstance that the Respondent did not formally reply and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4(a) has been established. (See De Agostini S.p.A. v. Marco Cialone , WIPO Case No. DTV2002-0005 ; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701 ). C. Registered and Used in Bad Faith The Complainant contends that its trademark ELECTROLUX has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. It submits that the Complainant’s trademark registrations in Viet Nam where the Respondent resides were recorded over a decade prior to when the disputed domain name was registered on April 2, 2012. It also submits that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name. The Panel agrees that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name in view of the Complainant’s trademark registration well prior to the registration of the disputed domain name, the status of a well-known and reputed trademark of the Complainant’s mark, and the manner of use of the Complainant’s mark in the Respondent’s website. The Panel recognizes that the Complainant’s mark is a well-known trademark internationally in the field of electric appliances. In light of the well-known status of the Complainant’s mark established well before the registration date of the disputed domain name, it is inferred that the Respondent registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s mark. This is because it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark ELECTROLUX or that the disputed domain name might be of some type of economic advantage in association with the Complainant’s mark (see T he Gap, Inc. v. Deng Youqian , WIPO Case No. D2009-0113 ; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 ). Registration of the disputed domain name incorporating the well-known Complainant’s mark ELECTROLUX by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith ( Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 ). The Panel notes the Complainant’s contention that the disputed domain name is currently connected to a website offering the Complainant’s new and used products, as well as technical support, repair and warranty services of the same. Therefore, the Panel agrees and finds that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website. Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, 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 the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv)). As such, the Panel infers that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to its website, making them believe that the website resolved by the disputed domain name is associated or authorized by the Complainant. As a result, the Respondent may generate unjustified revenues for its operating website resolved by the disputed domain name. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See Dolce & Gabbana s.r.l. v. Domain ID Shield Service / Misato Takahashi, bkt , WIPO Case No. D2013-0600 . See also Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 . Therefore, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision 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 <dienmayelectrolux.com> be transferred to the Complainant. Ho-Hyun Nahm Sole Panelist Date: August 15, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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