WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Гнучий Юрий Юрийович / Gnuchiy Yuri

Case No. D2020-1464

1. The Parties

The Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is Гнучий Юрий Юрийович / Gnuchiy Yuri, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <electrolux.top> is registered with Hosting Ukraine LLC (ua.ukraine) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on June 25, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email communication to the Parties in English and in Russian on the language of proceeding and invited the Complainant to respond by June 28, 2020 and the Respondent to comment on the Complainant’s response by June 30, 2020. On June 29, 2020, the Complainant filed an amended Complaint and a request for English to be the language of the proceeding. The Respondent did not file any comments on the language request of the Complainant.

The Center verified that the Complaint together with the amendment to 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 English and Russian, and the proceedings commenced on July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on August 8, 2020. 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.

On August 4, 2020, a third party sent an email communication to the Center apparently made on behalf of the Respondent, requesting an explanation about the substance of the proceeding. This third party did not respond to the Center’s request of August 5, 2020 to identify itself, to clarify its relationship to the Respondent, and to provide information sufficient to establish the legitimacy of its actions in the context of the current proceeding. On August 6, 2020, the Respondent sent an email communication to the Center by which it stated that it had just learned of the proceeding, that it had removed all content from the website at the disputed domain name, and that it was ready to transfer it. On August 18, 2020, the Complainant requested a suspension of the proceeding for 14 days, and on August 24, 2020, it requested the reinstitution of the proceeding.

4. Factual Background

The Complainant was established in 1901. It is one of the s leading producers of home and professional appliances and equipment for kitchen, cleaning products and floor care products. In 2018, the Complainant had about 55,000 employees, and its sales amounted to SEK 124 billion.

The Complainant owns the following trademark registrations for the sign ELECTROLUX (the “ELECTROLUX trademark”):

- the International trademark ELECTROLUX with registration No. 836605, registered on March 17, 2004 for goods and services in International Classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37 and 39 for various jurisdictions, including Ukraine; and

- the International trademark ELECTROLUX with registration No.1260775, registered on January 27, 2005, for goods and services in International Classes 7, 8, 9, 11, 21, 26, 35 and 37 for various jurisdictions, including Ukraine.

The Complainant maintains its official website about its Electrolux products at the domain name <electrolux.com>, created on April 30, 1996.

The disputed domain name was registered on February 12, 2020. It resolves to a website that offers various Electrolux air conditioners and installation and maintenance services for them, and prominently features the ELECTROLUX trademark.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the ELECTROLUX trademark, as it incorporates the trademark entirely, while the “.top” generic Top-Level-Domain (“gTLD”) does not add any distinctiveness to the disputed domain name.

The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as it is not commonly known by it and is not using it in connection with a bona fide offering of goods and services. According to the Complainant, the registration of the disputed domain name intended to take advantage of the Internet traffic generated by the incorporation of the ELECTROLUX trademark in it.

The Complainant points out that the Respondent uses the disputed domain name to attract Internet users to a website that offers repair and maintenance services for Electrolux products, and notes that the standard agreement that it has with all its authorized partners strictly forbids them to register domain names that incorporate the ELECTROLUX trademark. According to the Complainant, the incorporation of the ELECTROLUX trademark in its entirety in the disputed domain name and the inclusion of the ELECTROLUX logo on the associated website, combined with the lack of disclaimer for the lack of relationship between the Parties, strongly suggest that there is some official or authorized relationship with the Complainant for the purposes of repairs and services of Electrolux products.

According to the Complainant, the Respondent’s conduct does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903 (known as the “Oki Data test”), as the Respondent has not included a disclaimer on its website, deprives the Complainant of reflecting the ELECTROLUX trademark in the disputed domain name, and presents itself as the trademark owner by using the ELECTROLUX trademark and logo on its website.

The Complainant contends that the Respondent has registered the disputed domain name in bad faith, as the ELECTROLUX brand is a well-known trademark in the home appliance industry, and the Respondent must have been well aware of it when it registered the disputed domain name. The Complainant further states that the Respondent is using the disputed domain name in bad faith, as the Respondent has never been permitted to register it, and uses it for a service center website for ELECTROLUX products without including in it a disclaimer that there is no relationship between it and the Complainant. According to the Complainant, this shows that the Respondent intentionally attempts to attract visitors to the Respondent’s website by creating a likelihood of confusion with the ELECTROLUX trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products and services offered on it and thus takes advantage of the trademark.

The Complainant submits that it sent a cease and desist letter to the Respondent on April 23, 2020, but the Respondent never replied to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. On August 6, 2020, the Respondent submitted some email communications indicating that it would envisage settlement options.

6. Discussion and Findings

6.1. Procedural issue - Language of the proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is in Russian. Under paragraph 11 of the Rules, 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 Complainant requests that the language of the proceedings be English. It submits that it is likely that the Respondent understands English, and states that if the proceeding is to be conducted in Russian that would delay the procedure and would place an undue burden on the Complainant.

The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a Response or any objections to the Complainant’s request that the proceedings be held in English.

The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account and consider all evidence in Russian that is available in the case file.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name 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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent however did not submit a Response in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the ELECTROLUX trademark. In view of this, the Panel accepts that the Complainant has rights in the ELECTROLUX trademark for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.top” gTLD section of the disputed domain name.

The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “electrolux”, which is identical to the ELECTROLUX trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the ELECTROLUX trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by it and is not using it in connection with a bona fide offering of goods and services. Rather, the Respondent has used the disputed domain name in relation to a website that offers repair and maintenance services for Electrolux products and prominently features the ELECTROLUX trademark and logo, without disclosing the lack of affiliation between the Parties. The Complainant submits that in view of this the Respondent’s conduct does not comply with the requirements of the Oki Data test. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. It has not responded to the Complainant’s cease and desist letter either.

The disputed domain name is identical to the ELECTROLUX trademark, and the evidence in the case file shows that it resolves to a website directed at the Ukrainian market that offers Electrolux air conditioners and services related to them, and includes the ELECTROLUX trademark and logo without any indication that the owner of the website is unrelated to the Complainant. This makes it likely that Internet users may regard the disputed domain name as being an official online location offering the Complainant’s products and services for them in Ukraine.

On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant’s ELECTROLUX trademark, is likely to have registered and used the disputed domain name in an attempt to exploit this goodwill to attract the attention of Internet users in Ukraine and to mislead them that the disputed domain name and the associated website represent an official online location approved by the Complainant to offer its products and related services, without disclosing the lack of any partnership with the Complainant. In the Panel’s view, such conduct does not comply with the criteria set out in the Oki Data test and does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 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 your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name is identical to the ELECTROLUX trademark, which was registered more than fifteen years before the registration of the disputed domain name in many jurisdictions, including Ukraine, where the Respondent is located and to which market the website at the disputed domain name is directed. The Respondent does not deny that the same website offers the Complainant’s Electrolux products and related services for them, prominently features the ELECTROLUX trademark and logo, and does not contain a disclaimer for the lack of affiliation with the Complainant.

In view of the above, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the ELECTROLUX trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant. The website at the disputed domain name may further confuse Internet users that it is an official or an authorized online location offering the Complainant’s products and related services in Ukraine. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s ELECTROLUX trademark as to the endorsement by the Complainant of the Respondent’s website and of the products and services offered through it.

Therefore, the Panel finds that the disputed domain name has been registered and used 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 <electrolux.top> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: August 25, 2020