WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Li Yong

Case No. D2012-1782

1. The Parties

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

The Respondent is Li Yong of Guangzhou, China.

2. The Domain Name and Registrar

The disputed domain name <gzelectrolux.com> is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 5, 2012. On September 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2012, 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 September 10, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceedings. On September 11, 2012, the Complainant confirmed its request that English be the language of the proceedings. The 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 the Respondent of the Complaint, and the proceedings commenced on September 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on October 16, 2012. 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, Aktiebolaget Electrolux, is a Swedish joint stock company founded in 1901. The Complainant engages in household appliances and equipment for professional use. The Complainant sells more than 40 million products to customers in 150 countries every year, including China.

The Complainant is the owner of numerous worldwide trademark registrations for the mark ELECTROLUX in many jurisdictions around the world. For example: United States trademark registration No. 0908002– ELECTROLUX, with the registration date of February 16, 1971; Community trademark registration No. 000077925 – ELECTROLUX, with the registration date of September 16, 1998; Chinese trademark registration No. 862864 – ELECTROLUX, with the registration date of August 14, 1996; and many more.

The Complainant also has a presence on the Internet and is the owners of several domain names, which contain the mark ELECTROLUX. For example: <electrolux.com>, <electrolux.net>, <electrolux.com.hk>, <electrolux.com.cn>, and many more.

The disputed domain name <gzelectrolux.com> was registered by the Respondent on March 8, 2012.

The disputed domain name <gzelectrolux.com> currently resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant argues that consumers connect its ELECTROLUX trademark with the Complainant's products and services, having good reputation and international recognition. The Complainant further contends that its ELECTROLUX trademark has achieved the status of a well-known trademark due to the Complainant's extensive investment in advertising and long term use of it.

The Complainant further argues that previous UDRP panels have established that the Complainant's trademark is widely known. The Complainant indicates that the ELECTROLUX trademark was registered long before the disputed domain name was registered.

The Complainant further argues that the disputed domain name <gzelectrolux.com> fully incorporates and makes use of the Complainant's registered ELECTROLUX trademark. The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Complainant further argues that the addition of the prefix “gz” and the gTLD ".com" to the disputed domain name does not result in avoiding confusing similarity between the disputed domain name and the Complainant's mark. The Complainant contends that the prefix of the disputed domain name "gz" is an abbreviation of the city Guangzhou.

The Complainant further argues that the Respondent has no relevant trademark or trade name registrations corresponding with the disputed domain name and is not known by the name "Electrolux" and therefore has no rights or legitimate interest in the disputed domain name.

The Complainant further argues that it is not affiliated with the Respondent and did not license or authorize the Respondent to make any use of the Complainant’s trademark or products.

The Complainant further argues that the Respondent is not using the disputed domain name for a bona fide offering of goods or services, since the Respondent did not take steps to prevent confusion between the disputed domain name and the Complainant's ELECTROLUX trademark and products. Furthermore, the disputed domain name resolved to a commercial website that displayed a copyright notice with Chinese characters that means “Electrolux repair service center” and by doing so the Respondent is misleading consumers.

The Complainant further argues that there is no doubt the Respondent was aware of the Complainant's rights in the ELECTROLUX trademark upon registering the disputed domain name. The Complainant argues that the Respondent's offer of services and the creation of the false impression that the Respondent is an authorize repair and service provider indicates that the Respondent was aware of the Complainant and the Complainant's mark upon registering the disputed domain name. The Complainant is of the opinion that this is evidence for the Respondent's bad faith.

The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin. The Complainant further contends that the Respondent intentionally chose the disputed domain name in order to generate traffic to the Respondent's website, by misleading consumers to believe that it is affiliated with the Complainant. Furthermore, the Respondent displayed at the bottom of the website under the disputed domain name hyperlinks that direct to other commercial sites that contain links to the Complainant's direct competitors.

The Complainant further argues that according to previous UDRP rulings, the fact that the Respondent did not respond to the Complainant's cease and desist letters is an indication of the Respondent's bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by 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 Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain name <gzelectrolux.com> consists of Latin-script letters, rather than Chinese characters;

b) The disputed domain name includes the Complainant's mark, as well as the English abbreviation “gz” which presumably stands for Guangzhou;

c) The website under the disputed domain name used to display the Complainant's mark in Latin-script letters and also displayed a copyright notice that was partially in English;

d) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark ELECTROLUX. For example: United States trademark registration No. 0908002– ELECTROLUX, with the registration date of February 16, 1971; Community trademark registration No. 000077925 – ELECTROLUX, with the registration date of September 16, 1998; Chinese trademark registration No. 862864 – ELECTROLUX, with the registration date of August 14, 1996; and many more.

The disputed domain name integrates the Complainant’s ELECTROLUX trademark in its entirety, as a dominant element.

The disputed domain name <gzelectrolux.com> differs from the registered ELECTROLUX trademark by the additional abbreviation "gz" and by the additional gTLD ".com".

The additional term "gz" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's ELECTROLUX trademark, especially as it is presumable that the term "gz" is used as an abbreviation for "Guangzhou", which by itself is not distinctive.

Previous WIPO UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is typically without legal significance since the use of a gTLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect of the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its ELECTROLUX trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (the Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its ELECTROLUX trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the ELECTROLUX trademark since the year 1971. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name is resolved.

The Complainant provided evidence to demonstrate the ELECTROLUX trademark’s vast goodwill. The Complainant has also indicated that a previous UDRP decision already affirmed that the Complainant's trademark is widely known (see AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777). The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

The Complainant provided sufficient evidence to prove that the disputed domain name used to resolve to a commercial website, which promoted services that are connected to the Complainant’s services and products. The Respondent's use of the Complainant's trademark to promote services that are connected to the Complainant’s goods as well as providing links that resolve to other commercial websites that contained links to the Complainant’s direct competitors is also clear evidence to the Panel that the Respondent registered the disputed domain name with knowledge of the Complainant's ELECTROLUX trademark and of the Complainant's commercial use of it, and subsequently intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademark falls under paragraph 4(b) of the Policy.

In addition, previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

The Panel also notes that the Respondent failed to respond to the Cease and Desist letter and reminder sent by the Complainant. It is well established and accepted that failure to respond to Cease and Desist letters without legitimate reason may be evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

In light of the Complainant's distinctive registered trademark, the Respondent's use of a confusingly similar disputed domain name and the Respondent's lack of response to the Complainant's Cease and Desist letter and reminder, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The fact that the disputed domain name is currently inactive does not change the Panel’s findings in this respect.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <gzelectrolux.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: October 29, 2012