The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Studio web 51 of Bogota, Colombia.
The disputed domain name <electroluxbogota.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 2013, 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 September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 14, 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.
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a producer of appliances and equipment for kitchen and cleaning. It sells more than 40 million products to customers in 150 countries every year. In 2009, the Complainant had sales of SEK 109 billion and 51,000 employees.
The Complainant is the owner of a trade mark comprising the word “electrolux” (the ELECTROLUX Mark), in jurisdictions across the world, including Columbia, the location of the Respondent. The 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 including <electrolux.com.co>, <electrolux.com> and <electrolux.co.uk>.
The Domain Name <electroluxbogota.com> was registered on July 13, 2013. The Domain Name is currently inactive however prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that appeared to offer repair services for the Complainant’s products and made references to the ELECTROLUX Mark. According to the Complainant, the Respondent is not an authorised dealer or repairer of its products.
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ELECTROLUX Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ELECTROLUX Mark. It owns trade mark registrations for the ELECTROLUX Mark in over 150 countries around the world. The Domain Name consists of the ELECTROLUX Mark and the suffix “bogota". The addition of the suffix “bogota” will not have any impact on the overall impression of the dominant part of the name, “electrolux”, instantly recognizable as a world famous trademark. In Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, concerning the domain name <electroluxmadrid.info>, the panel stated that “As prior panels have said, referring to the addition of a geographic term to a registered mark: “none of these additions, either alone or in conjunction with one another, are able to overcome a finding of confusing similarity between the disputed domain names and Complainant’s mark.”
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “electrolux” or any similar trade mark nor is it authorised to repair the Complainant’s goods. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name is currently connected to a web site offering repair services for the Complainant’s products. By doing this, the Respondent is misleading Internet users to a commercial web site and consequently, the Respondent is tarnishing the trademark ELECTROLUX.
The Domain Name was registered and is being used in bad faith. The Domain Name is currently connected to a web site offering repair services for Electrolux products. Consequently, the Respondent is using the 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 mark as to the source, sponsorship, affiliation or endorsement of the websites. In Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031,about the domain name <grupoelectrolux.com>, the panel stated that, “…by registering and using the disputed domain name incorporating the Complainant’s widely-known and widely-registered trademark ELECTROLUX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant.”
The Respondent is clearly aware of the Complainant and is using the Domain Name to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website. The Respondent has registered and used the Domain Name in bad faith by registering the Domain Name while being aware of the Complainant’s rights and then using the Domain Name for financial gain.
The Respondent did not reply to the Complainant’s contentions.
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ELECTROLUX Mark, having registrations for ELECTROLUX as a trade mark in 150 countries around the world, including Colombia.
The Domain Name consists of the ELECTROLUX Mark and the word “bogota”. Bogota is the name of the capital city of Colombia. The addition of a geographical term to a trade mark is generally not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v.Vidudala Prasad, WIPO Case No. D2001-1493). An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainant, offering its products in Bogota. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ELECTROLUX Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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 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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ELECTROLUX Mark or a mark similar to the ELECTROLUX Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent currently does not use the Domain Name but prior to the commencement of the proceeding used the Domain Name to operate a website that advertised its repair services for the Complainant’s products as well as products made by the Complainant’s competitors, such as KitchenAid and Whirlpool.
The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Respondent is a repairer of the Complainant’s goods, not a reseller of goods, but the principles applied are similar.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3 summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorised repairer or has any particular connection with the Complainant. Rather, its prominent display of the ELECTROLUX Mark gives the impression that the website is closely connected with the Complainant. Furthermore the Respondent’s Website contains references to the trademarks of the Complainant’s competitors, and indicates the Respondent provides repair services for those products. Members of the public who are interested in the Complainant’s products may visit the Respondent’s Website on the assumption that the Respondent is the Complainant or an authorised repairer of the Complainant’s products in Bogota. This is not the case. The Respondent is not an authorised repairer of the Complainant’s products, but has registered a domain name incorporating the ELECTROLUX Mark to advertise its general kitchen products repair service. Such use is not a bona fide offering of goods and services.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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.
The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of Complainant. The Domain Name resolves to a website that displays the ELECTROLUX Mark and advertises the Respondent’s repair services for products branded with the ELECTROLUX Mark.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent has used the Domain Name for the purposes of operating a website to advertise its repair services for kitchen products, including those produced by the Complainant, KitchenAid and Whirlpool. The use of the ELECTROLUX Mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Respondent’s Website are calculated to confuse Internet users into thinking that the Respondent is an authorised repairer of the Complainant’s products when this is not the case. This shows a clear intention on the part of the Respondent to attract Internet users for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website was authorised or endorsed by the Complainant.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <electroluxbogota.com> be transferred to the Complainant.
Date: October 16, 2013
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