Aktiebolaget Electrolux v. Factory Direct c/o Director, Marketing
Claim Number: FA0512000604735
Complainant is Aktiebolaget Electrolux (“Complainant”), represented by Deborah A. Wilcox, of Baker & Hostetler LLP, 1900 E. 9th Street, Suite 3200, Cleveland, OH 44114. Respondent is Factory Direct c/o Director, Marketing (“Respondent”), 22 Church Street, Suite 103 #305, Ramsey, NJ 07446.
The domain names at issue are <electroluxvacuums.com> and <beamcentralvacuums.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 2, 2005.
On December 2, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <electroluxvacuums.com> and <beamcentralvacuums.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 6, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 27, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@electroluxvacuums.com and postmaster@beamcentralvacuums.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <electroluxvacuums.com> domain name is confusingly similar to Complainant’s ELECTROLUX mark, and Respondent’s <beamcentralvacuums.com> domain name is confusingly similar to Complainant’s BEAM mark.
2. Respondent does not have any rights or legitimate interests in the <electroluxvacuums.com> or <beamcentralvacuums.com> domain names.
3. Respondent registered and used the <electroluxvacuums.com> and <beamcentralvacuums.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aktiebolaget Electrolux, formed in 1919 from two existing manufacturing companies. Complainant’s household vacuum sweeper became popular throughout Sweden then throughout the world. Complainant’s first sale of ELECTROLUX brand vacuums occurred in 1920, and by 1931, Complainant had extended its manufacturing to include the United States. Complainant began using the BEAM trademark in 1957.
Complainant registered the ELECTROLUX mark with the U.S. Patent Office, the predecessor of the U.S. Patent and Trademark Office (“USPTO”), on March 3, 1925 (Reg. No. 195,691). It also registered the BEAM trademark on June 15, 1982 with the Department of Consumer and Corporate Affairs Canada (Reg. No. 269,550).
Respondent registered the <electroluxvacuums.com> domain name on April 12, 2002. Respondent also registered the <beamcentralvacuums.com> domain name on September 20, 2002. The domain names refer to parking pages sponsored by the registrar. The web page associated with the <electroluxvacuums.com> domain name includes links to “Electrolux Vacuum Bags,” “Electrolux Vacuums,” “Dyson Vacuums,” “Carmen’s Vacuum,” and “Oreck.com Has The Power,” and the web page associated with the <beamcentralvacuums.com> domain name includes links to “Kenmore Central Vacuums,” “Beam Central Vacuums,” and “Vacu-Maid Central Vacuums.” Both web pages display the following message: “This web site is parked free, courtesy of GoDaddy.com®”.
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."
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.”).
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 and is being used in bad faith.
Complainant has offered its U.S. and Canadian trademark
registrations to establish its rights in the ELECTROLUX and BEAM marks,
respectively. The Panel finds that
Complainant has established that it has rights pursuant to Policy ¶
4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The Panel finds that the <electroluxvacuums.com>
domain name is confusingly similar to Complainant’s ELECTROLUX mark. The only difference is the addition of the
related word “vacuums,” which does not significantly distinguish the domain
name from the mark. The Panel also
finds that the <beamcentralvacuums.com> domain name is confusingly
similar to Complainant’s BEAM mark. The
only difference is the addition of the related words “central” and “vacuums”
which do not significantly distinguish the domain name from the mark. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); Marriott
Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000)
(finding that the respondent’s domain name <marriott-hotel.com> is
confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s marks in the <electroluxvacuums.com>
and <beamcentralvacuums.com> domain names to refer Internet users
to Complainant and competing services.
For the purposes of determining rights and legitimate interests, it is
immaterial that the source of the associated web content is not Respondent but,
rather, the Registrar. Using domain
names to appropriate another’s marks to refer Internet users to Complainant and
Complainant’s competitors is neither a bona fide offering of a good or
service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); Or. State Bar
v. A Special Day, Inc., FA 99657 (Nat.
Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale
of law-related books under Complainant's name is not a bona fide offering of
goods and services because Respondent is using a mark confusingly similar to
the Complainant's to sell competing goods.”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The disputed domain names are appropriating Complainant’s
marks and referring Internet traffic to Complainant’s competitors. In the absence of a Response, the Panel
accepts Complainant’s allegation that Respondent is benefiting by including
these links on the resultant websites.
Appropriating another’s marks to refer Internet traffic to competitors
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <electroluxvacuums.com> and <beamcentralvacuums.com> domain names be TRANSFERRED from Respondent to Complainant.
Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 9, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum