AB Electrolux v Hasan Mushtaq / Badiana Master, Arabian

WIPO Case No. D2024-4785

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Hasan Mushtaq / Badiana Master, Arabian

Case No. D2024-4785

1. The Parties

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

The Respondents are Hasan Mushtaq, Pakistan and Badiana Master, Arabian, United Arab Emirates

(“UAE”).

2. The Domain Names and Registrar

The disputed domain names <electrolux-service-center.com> (the “first disputed domain name”) and

<electrolux-servicecenter.com> (the “second disputed domain name”) are registered with NameCheap, Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20,

2024. On November 20, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain names. On November 20, 2024, the Registrar

transmitted by email to the Center its verification response disclosing registrant and contact information for

the disputed domain names which differed from the named Respondent (“Redacted for Privacy, Privacy

service provided by Withheld for Privacy ehf”) and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 21, 2024, with the registrant and

contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the

Complainant to either file separate complaints for the disputed domain names associated with different

underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity

and/or that all domain names are under common control. The Complainant filed an amendment to the

Complaint on November 25, 2024.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the

Complaint, and the proceedings commenced on November 27, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was December 17, 2024. The Respondents did not submit any

response. Accordingly, the Center notified the Respondents’ default on December 20, 2024. Subsequently,

the Center received informal email communications on December 20, 23, and 24, 2024, from the email

address associated with the first disputed domain name.

The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on January 3, 2025.

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, AB Electrolux, is a Swedish multinational appliance manufacturer established in 1919 and

one of the world’s leading producers of appliances and equipment for kitchen, cleaning products, and floor

care products. According to the Complainant’s annual report in 2023, the Complainant had sales of SEK 136

billion, offers its products in approximately 120 different markets worldwide, and has about 45,000

employees internationally.

The Complainant has a large portfolio of ELECTROLUX trademarks registered in many countries and

territories worldwide, including:

- Norway Trademark Registration ELECTROLUX No. 19494, registered on May 1, 1928, for goods in

International Classes 7, 9, 11, and 21;

- New Zealand Trademark Registration ELECTROLUX No. 26505, registered on September 11, 1929,

for goods in International Class 9;

- International Trademark Registration for the ELECTROLUX word and figurative mark No. 836605,

registered on March 17, 2004, designating several countries for goods in International Classes 3, 7, 8, 9, 11,

12, 21, 25, 35, 37, and 39.

In addition, several prior UDRP decisions recognized that the ELECTROLUX trademark is well-known

(including, AB Electrolux v. Mahdi Alzubaidi, WIPO Case No. D2020-1152; AB Electrolux v. Contact Privacy

Inc. Customer 0156488856 / Junior Natabou, Electrolux TM, WIPO Case No. D2020-0061).

The Complainant also notes that it owns the domain name <electrolux.com> registered on April 30, 1996.

The first disputed domain name was registered on March 25, 2024. It resolves to a website in English,

prominently displaying the Complainant’s ELECTROLUX trademark, using the Complainant’s favicon, and

offering repair services for the Complainant’s products in Dubai, Abu Dhabi, and Sharjah.

The second disputed domain name was registered on July 24, 2023. At the time of filing the Complaint, it

was also resolving to a website in English which offers repair services for ELECTROLUX products in the

exact same locations. The website was also clearly displaying the ELECTROLUX trademark and using the

Complainant’s favicon. At the time of this decision, the second disputed domain name resolves to an

inactive page with a default error message.

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5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain names. The Complainant’s contentions can be summarized as follows.

First, the Complainant contends that the disputed domain names incorporate the entirety of the well-known

ELECTROLUX trademark, and therefore, they are confusingly similar to it. The addition of the generic terms

“service” and “center” together with hyphens does not prevent a finding of confusing similarity. The generic

Top-Level Domain (“gTLD”) “.com” is inconsequential in the present case in determining the similarities

between the disputed domain names and the Complainant’s trademark.

Second, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of

the disputed domain names. The Complainant contends, inter alia, that it has not authorized the

Respondents to use the ELECTROLUX trademark for any reason or in any manner; there is no evidence

suggesting that the Respondents have any trademark rights on the disputed domain names or that the

Respondents have been commonly known by the disputed domain names. In addition, the Complainant

claims that the Respondents have not used the disputed domain names in good faith or for a noncommercial

activity. Particularly, the Complainant asserts that the disputed domain names resolve to websites which

prominently display the ELECTROLUX trademark in an unauthorized manner and allegedly offer repairing

services of ELECTROLUX appliances in Dubai, Abu Dhabi, and Sharjah. The Complainant notes that these

websites have the same look and feel as an official ELECTROLUX website; the websites show the

Complainant’s favicon in an unauthorized manner; the websites do not indicate the name of the company

that provides the repairing services; the websites do not accurately and prominently disclose the

Respondents’ relationship – or lack of relationship – with the Complainant. Finally, the Complainant

contends that the disputed domain names are potentially confusing as to the source or sponsorship of the

websites to which they are resolving and the Respondents’ services, which do not meet the requirements of

the Oki Data test.

Third, the Complainant asserts that the disputed domain names were registered and are being used in bad

faith. In this respect, the Complainant notes that its well-known ELECTROLUX trademark has been in use

well before the registration dates of the disputed domain names; the disputed domain names reproduce in

full the said trademark with the addition of the generic terms “service” and “center”; a simple Internet search

would have informed the Respondents on the existence of the Complainant’s rights in the ELECTROLUX

trademark; the disputed domain names resolve to websites which display the ELECTROLUX trademark,

reproduce the Complainant’s favicon, and allegedly offer repair services. Therefore, the Complainant

contends that the Respondents had the Complainant’s trademark and products in mind when they registered

the disputed domain names, and they registered the disputed domain names in bad faith. The Complainant

also contends that the mere registration of a domain name that is identical or confusingly similar to a famous

trademark by an unaffiliated entity can by itself create a presumption of bad faith. Regarding the bad faith

use of the disputed domain names, the Complainant particularly asserts that the disputed domain names

resolve to websites which allegedly offer repair services for ELECTROLUX-branded products, displaying the

ELECTROLUX trademark and favicon in an unauthorized manner, and do not state in a clear and prominent

manner the lack of relationship with the Complainant. Therefore, the Complainant contends that the

Respondents have used the disputed domain names to intentionally attempt to attract for commercial gain

Internet users to their websites by creating a likelihood of confusion. The Complainant also notes that the

Respondents’ use of privacy services and the fact that the disputed domain names are associated with mail

servers are further indications for a finding of bad faith registration and use of the disputed domain names.

Finally, the Complainant indicates that the registrant of the first disputed domain name appears to have used

other domain names that may misappropriate third-party well-known trademarks, and this fact may constitute

further evidence of bad faith.

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B. Respondents

The Respondents did not formally reply to the Complainant’s contentions. On December 20, 23, and 24,

2024, the Respondent requested further explanation of the proceeding, claimed (without evidence) to provide

“repair services for out-of-warranty Electrolux home appliances in the UAE”, and asked if changes to the

website appearance, including ceasing use of the Complainant’s logo, would be acceptable.

6. Discussion and Findings

6.1. Procedural Issues: Late Informal Communications and the Complainant’s Consolidation

Request

The Center received three informal email communications on December 20, 23, and 24, 2024, from the

email address associated with the first disputed domain name after the due date for Response of

December 17, 2024. Pursuant to paragraph 10 of the Rules, the Panel has discretionary authority to

consider late-filed submissions from the Parties.

The Panel notes the email communications are brief, and their review would cause no delay to the

proceeding. Accordingly, the Panel has exceptionally taken them into account as part of the record. In any

event, the Panel notes these late informal submissions have not changed the Panel’s determinations in the

present case.

The amendment to the Complaint was filed in relation to nominally different domain name registrants. The

Complainant alleges that the disputed domain names are under common control. The Complainant requests

the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to

paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that

the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or

corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable

to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names target the same well-known

ELECTROLUX trademark; the disputed domain names have nearly the exact same structure with the only

difference of an additional hyphen on the first disputed domain name; they are both registered with the same

Registrar and use the same privacy service provider. Particularly, the disputed domain names resolve to

websites offering the same repair services for ELECTROLUX products in the same geographical area. It

must be also emphasized that these websites had a remarkably similar design. The Panel also notes that

the Respondents have not objected to the consolidation request. Therefore, the Panel finds that the

Complainant has established more likely than not that the disputed domain names are subject to common

control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair

or inequitable to any Party.

Considering also the procedural efficiency, the Panel decides to consolidate the disputes regarding the

nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single

proceeding.

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6.2. Substantial Issues

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing

(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain

names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, “service” and “center” with hyphens, may bear on assessment of

the second and third elements, the Panel finds the addition of such terms do not prevent a finding of

confusing similarity between the disputed domain names and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the

Policy or otherwise.

The Complainant sufficiently established that the disputed domain names are not being used in connection

with a bona fide offering of goods or services, and the Respondent is not making a legitimate noncommercial

or fair use of the disputed domain names. Nothing in the record suggests that the Respondent is commonly

known by the disputed domain names. In particular, the Complainant provided screenshots regarding the

use of the disputed domain names. The screenshots clearly show that the disputed domain names resolve

to websites where the Respondent promotes its repair services for the ELECTROLUX products. In addition,

these websites have a very similar look to the Complainant’s official website. The first disputed domain

name resolves to a website which displays a disclaimer written in a smaller size, located only at the bottom

of the related website. The website at the second disputed domain name does not include any disclaimer

and displays the following message: “As the authorized Electrolux agency in Dubai, […].” Therefore, the

Panel concludes that these websites do not adequately disclose the relationship, or the lack thereof,

between the Respondent and the Complainant. Under these circumstances, the Panel finds that the

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Respondent cannot be accepted as a legitimate repair service provider pursuant to the Oki Data test and its

use of the disputed domain names cannot be considered a bona fide offering of goods or services under the

Policy. WIPO Overview 3.0, section 2.8.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel considers the registration dates of the Complainant’s trademarks and the

disputed domain names, the well-known nature of the ELECTROLUX trademark, the composition of the

disputed domain names, and their use and finds that the Respondent registered the disputed domain names

in bad faith to target and take advantage of the Complainant’s trademark.

Following the determination under the previous section, the Panel also finds that the Respondent acted in

bad faith by using the disputed domain names to attract, for commercial gain, Internet users to its websites

by creating a likelihood of confusion with the Complainant’s well-known ELECTROLUX trademark as to the

source, sponsorship, affiliation, or endorsement of its websites or of the repair services offered by itself.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the

doctrine of passive holding. WIPO Overview 3.0, section 3.3. At the time of this decision, the second

disputed domain name resolves to an inactive page with a default error message. Having reviewed the

available record, the Panel notes the distinctiveness and the international reputation of the Complainant’s

trademark, the composition of the second disputed domain name, and the Respondent’s failure to respond to

the Complaint, and finds that in the circumstances of this case the passive holding of the second disputed

domain name does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element 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 names <electrolux-service-center.com> and <electrolux-servicecenter.com>

be transferred to the Complainant.

/Mehmet Polat Kalafatoglu/

Mehmet Polat Kalafatoglu

Sole Panelist

Date: January 17, 2025