WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Handi Sofian, Service Electrolux Lampung
Case No. D2016-2416
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Handi Sofian, Service Electrolux Lampung, of Bandar Lampung, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <serviceelectroluxlampung.com> is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2016. On November 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 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.
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, and the proceedings commenced on December 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2016. On December 24, 2016, the Center received an email communication from the Respondent.
The Center appointed William R. Towns as the sole panelist in this matter on January 5, 2017. 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, a Swedish joint stock company founded in 1901, is a leading provider of home appliances, including refrigerators, dishwashers, washing machines, and vacuum cleaners. Such appliances are sold by the Complainant under its flagship ELECTROLUX trademark. The Complainant has obtained word and word plus design registrations for its ELECTROLUX and ELECTROLUX-formative marks in more than 150 countries around the world, including Indonesia. The Complainant’s ELECTROLUX registrations include the following word plus design mark:
The Complainant also has registered domain names reflecting its ELECTROLUX mark, used with the Complainant’s official websites. The Complainant maintains a business presence in Indonesia, and operates a website at “www.electrolux.co.id”, providing customers with product information and locations of official ELECTROLUX sales and service outlets in Indonesia.
The Respondent, by all indications a resident of Lampung, Indonesia, registered the disputed domain name on December 28, 2015. Prior to the filing of the Complaint, the disputed domain name resolved to a website on which the Respondent represented to be an “authorized service” provider for ELEXTROLUX appliances in Lampung. The Respondent’s website prominently featured the Complainant’s ELECTROLUX mark and logo, as follows:
Upon learning of the Respondent’s registration and use of the disputed domain name, the Complainant sent a cease and desist letter to the Respondent on August 25, 2016, and a second notification letter on September 1, 2016, but received no reply from the Respondent. The disputed domain name currently does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its well-known ELECTROLUX mark, as the disputed domain name incorporates the Complainant’s mark in its entirety. The Complainant maintains that the descriptive word “service” and the geographic indicator “Lampung” do not serve to distinguish the disputed domain name from the Complainant’s mark. The Complainant also asserts that the generic Top-Level Domain (“gTLD”) “.com” is usually disregarded for purposes of this assessment of confusing similarity under the first element of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been licensed to use the Complainant’s ELECTROLUX mark and is not operating an authorized repair center. The Complainant explains that its authorized distributors are contractually prohibited from registering and using domain names incorporating the Complainant’s mark. The Complainant maintains that the Respondent’s incorporation of the Complainant’s ELECTROLUX mark in the disputed domain name, the prominent website display of the Complainant’s ELECTROLUX mark and logo, and the Respondent’s website claim to be operating an “authorized service” center strongly suggests an official or authorized relationship with the Complainant for purposes of providing repairs and services in Indonesia.
The Complainant, relying on Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903, maintains that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the Respondent clearly knew of the Complainant’s mark when registering the disputed domain name. The Complainant argues that the Respondent has failed to satisfy the requirements of Oki Data because: (1) the Respondent has not provided a disclaimer on the website; (2) the Respondent is depriving the Complainant of reflecting its own mark in a domain name; and (3) the Respondent is impersonating the Complainant by using the ELECTROLUX trademark and logo on the website.
The Complainant argues that the Respondent’s use of the disputed domain name with the website falsely creates an impression that the Respondent either is or else is affiliated with the Complainant. As such, the Complainant asserts that the Respondent cannot claim prior relevant rights in the disputed domain name, or to have been commonly known by the disputed domain name, or to be making a legitimate noncommercial use of the disputed domain name.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent is using the disputed domain intentionally to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website. The Complainant asserts that such consumer confusion is increased by the prominent display of the Complainant’s ELECTROLUX mark and logo on the Respondent’s website and lack of disclaimer, falsely suggesting either that the Respondent is the trademark owner or that the website is an official site.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. As noted above, the Respondent sent an email to the Center on December 24, 2016, but it does not appear that the Respondent’s email addressed in any meaningful way the contentions set forth in the Complaint.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See “Final Report of the First WIPO Internet Domain Name Process”, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s ELECTROLUX mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the Complainant’s ELECTROLUX mark is clearly recognizable in the disputed domain name. The addition in the disputed domain name of the descriptive word “service” and the geographic indicator “Lampung” does not dispel the confusing similarity. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,
WIPO Case No. D2007-1524.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ELECTROLUX mark. The disputed domain name, however, incorporates the Complainant’s mark in its entirety, and resolves to a website where the Respondent prominently displays the Complainant’s distinctive ELECTROLUX mark and logo, and holds himself out to the public as operating a service center authorized by the Complainant.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The most often cited UDRP decision in evaluating domain names of resellers, distributors or service providers is Oki Data Americas, Inc. v. ASD, Inc., supra (hereinafter “Oki Data”). In Oki Data, the Respondent was a reseller of the Complainant’s OKI DATA-branded products, and registered the domain name <okidataparts.com>. The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:
- 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 respondents 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 Oki Data approach acknowledges certain scenarios relating to the potential legitimacy of using another’s trademark in a domain name, often referred to as “nominative fair use”. An overarching principle of the Oki Data approach is that a use of a domain name cannot be “fair” if it suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,
WIPO Case No. D2014-1359 (Oki Data approach considers and applies nominative fair use principles with reference to the limited scope of the Policy, and specifically with respect to the respondent’s use of the complainant’s mark in a domain name); Project Management Institute v. CMN.com,
WIPO Case No. D2013-2035 (“[It] is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement”).
The record in the instant case does not in the Panel’s view reflect the Respondent’s observance of the Oki Data criteria. Generally speaking, UDRP panels have found that domain names identical to a third-party trademark carry a high risk of such affiliation. Where the domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.2 It is difficult to state with precision what qualitative aspects of such additional term would automatically suggest such impersonation, sponsorship, or endorsement. Certain geographical terms (e.g., <trademark-nyc.com>, or<trademark.nyc>), or terms with an “inherent Internet connotation” (e.g., <e-trademark.com>, <buy-trademark.com> or <trademark-online.com>) would seem, by their nature, to fall within this category. At the other extreme, certain critical terms (e.g., <trademarksucks.com>) would in most contexts at least prima facie communicate that there is no affiliation. In the gray zone, certain terms within the trademark owner’s field of commerce, or indicating services related to the brand while referring to the relevant mark (e.g., <okidataparts.com>, or <trademark.feedback>), may not necessarily trigger an inference of affiliation by themselves, but would normally require a further examination by the panel of the broader facts and circumstances of the case including the associated website content to assess the propriety of the use made of the domain name (e.g., under the Oki Data approach). See, e.g., 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, supra.
In this regard, it is the Panel’s opinion that the disputed domain name selected by the Respondent, particularly when considered in conjunction with the website content, misrepresents the nature of the “relationship” or (lack of) affiliation of the Respondent with the Complainant. The disputed domain name in and of itself could suggest to Internet users that the Complainant has opened and is operating service center in Lampung for the benefit of owners of ELECTROLUX products, or at the very least that the ELECTROLUX service center in Lampung is affiliated with, sponsored, or endorsed by the Complainant. Such affiliation, sponsorship, or endorsement is further reinforced by the content of the Respondent’s website, notably the prominent display of the Complainant’s distinctive ELECTROLUX mark and logo in close proximity to the words “Authorized Service.”
In this context, the Respondent’s failure to address the Oki Data requirements is fatal to a claim of rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not operating an authorized service center, and the Respondent has not come forward with any evidence to the contrary. Based on the record in this case, the Panel finds that the Respondent has not accurately disclosed his relationship (or lack thereof) with the Complainant on his website. Because the Respondent’s domain name invokes a suggestion of affiliation with the trademark owner that has not been satisfactorily disclaimed, such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests. Rather, it constitutes the kind of behavior prohibited by the Policy.
Having regard to all of the relevant circumstances in this case, and absent any explanation from the Respondent, the Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, has not been commonly known by the disputed domain name, and has not otherwise demonstrated rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondent was aware of the Complainant and the Complainant’s ELECTROLUX mark when registering the domain name. It is a reasonable inference that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s mark to drive traffic to the Respondent’s website. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent has intentionally attempted for commercial gain to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <serviceelectroluxlampung.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 22, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
2 See Grundfos Holding A/S v. Ahmed Alshahri,
WIPO Case No. D2015-1112; Johnson & Johnson v. Ebubekir Ozdogan,
WIPO Case No. D2015-1031.
