national arbitration forum

 

DECISION

 

AB Electrolux v. bordin sribenjarat / thaiblogger

Claim Number: FA1301001481498

PARTIES

Complainant is AB Electrolux (“Complainant”), represented by Cecilia Borgenstam of Melbourne IT Digital Brand Services AB, Sweden.  Respondent is bordin sribenjarat / thaiblogger (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <electroluxcleaners.us>, registered with GoDaddy, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received a hard copy on February 4, 2013.

 

On January 23, 2013, GoDaddy, LLC confirmed by e-mail to the National Arbitration Forum that the <electroluxcleaners.us> domain name is registered with GoDaddy, LLC and that Respondent is the current registrant of the name.  GoDaddy, LLC has verified that Respondent is bound by the GoDaddy, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On February 6, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (“the Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <electroluxcleaners.us> domain name, the domain name at issue, is confusingly similar to Complainant’s ELECTROLUX      mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

 

FINDI

Complainant has registrations for the ELECTROLUX mark, which it uses in part for its solicitation of goods and services related to vacuum cleaners. Complainant owns the registration with the United States Patent & Trademark Office (“USPTO”) for the ELECTROLUX mark (Reg. No. 1,617,477 registered October 16, 1990).  Respondent’s <electroluxcleaners.us> domain name is confusingly similar to the ELECTROLUX mark.  The addition of “cleaners” is not relevant because it refers to one type of products (vacuum cleaners) sold by Complainant, and therefore strengthens the impression that the domain name is similar to the ELECTROLUX mark.  The addition of the usTLD “.us” is also irrelevant because it does not impact the overall domain name.  Respondent’s name does not illustrate that it has been commonly known as the disputed domain name.

Respondent has offered neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.  Respondent has connected the <electroluxcleaners.us> domain name to the <amazon.com> domain name, where an array of products is being offered.  Respondent is seeking to intentionally confuse Internet users into believing Complainant is affiliated with the <electroluxcleaners.us> domain name in order to divert users to the <amazon.com> domain name.  Respondent is likely acquiring fees and profits through this process.  It appear that Respondent was aware of Complainant’s rights in the ELECTROLUX mark.  The <electroluxcleaners.us> domain name was registered on September 4, 2012.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

Complainant has registrations for the ELECTROLUX mark, which it uses in part for its solicitation of goods and services for vacuum cleaners. Complainant asserts Is the owner of the USPTO registration for the ELECTROLUX mark (Reg. No. 1,617,477 registered October 16, 1990).   A USPTO registration can be sufficient evidence of rights under UDRP ¶ 4(a)(i), even if neither party resides in the United States.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).  The Panel concludes that Complainant has rights for the ELECTROLUX mark under Policy ¶ 4(a)(i).

 

Respondent’s <electroluxcleaners.us> domain name is confusingly similar to the ELECTROLUX mark.  The addition of the term “cleaners” is not relevant because it refers to one type of products (vacuum cleaners) sold by Complainant and therefore strengthens the impression that the domain name is similar to the ELECTROLUX mark.  The addition of the usTLD “.us” is irrelevant because it does not impact the overall domain name.  See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to [the] analysis”).  The addition of the term “cleaners” enhances the confusing similarity of the <electroluxcleaners.us> domain name because the term refers to the vacuum cleaning products sold under the ELECTROLUX mark.  See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark because the appended term related directly to the complainant’s business). Therefore, the <electroluxcleaners.us> domain name is confusingly similar to the ELECTROLUX mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

There must be at least some affirmative evidence to suggest a respondent is the owner or beneficiary of a mark that is identical to the disputed domain name.  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).  When Respondent can show no evidence establishing any trademark rights, Respondent cannot be found to be the owner or beneficiary of any mark reflecting the <electroluxcleaners.us> domain name under Policy ¶ 4(c)(i).

 

Respondent’s name does not illustrate that it has ever been commonly known as the disputed domain name.   The WHOIS information lists “bordin sribenjarat / thaiblogger” as the registrant of the name.  A respondent is not commonly known by a given domain name when no evidence, WHOIS information included, can connect the respondent to the domain name.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).  Accordingly, Respondent is not commonly known by the <electroluxcleaners.us> domain name under Policy ¶ 4(c)(iii).

 

Respondent has offered neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.  Respondent has connected the <electroluxcleaners.us> domain name to the <amazon.com> domain name, where an array of products is being offered.  The domain name resolves to a webpage featuring various products manufactured by Complainant, but when an Internet user clicks to purchase any of these items they are brought to the item’s website on the <amazon.com> domain name.  There is no bona fide offering in the commercial offering of Complainant’s own goods, whether directly or by click-through links to another website.  See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).  Accordingly, Respondent has failed to provide a Policy ¶ 4(c)(ii) bona fide offering of goods or services, and is not using the domain name in furtherance of a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration or Use in Bad Faith

Respondent is seeking to intentionally confuse Internet users into believing Complainant is affiliated with the <electroluxcleaners.us> domain name in order to divert users to the <amazon.com> domain name.  Respondent is likely acquiring fees and profits through this process.  The disputed domain name purports to offer an array of Complainant’s products via hyperlinks, and these hyperlinks in turn direct the Internet user to the <amazon.com> domain name.  It is bad faith use and registration to confuse Internet users into believing that a confusingly similar domain name, offering a complainant’s own products, is owned by or affiliated with a complainant in order to ensure Internet users continue to mistakenly generate profits from the respondent.  See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).  Respondent has registered and used the <electroluxcleaners.us> domain name in order to confuse Internet users into falsely associating the domain name with Complainant in bad faith under Policy ¶ 4(b)(iv).

 

It appears that Respondent was aware of Complainant’s rights in the ELECTROLUX mark.   The confusing similarity of the<electroluxcleaners.us> domain name, and the fact that Respondent is offering Complainant’s own products on the disputed domain name clearly indicates this.  Although some panels have not regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under UDRP ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <electroluxcleaners.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  March 6, 2013

 

 

 

 

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