Decision for dispute CAC-UDRP-107591

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns numerous trademark registrations in more than 150 countries including Chile, and has the following international trademark registrations for the distinctive word mark, ELECTROLUX:

1) International registration No. 828253, registered on 18 November 2003 for goods and services in International Classes 3, 7, 8, 9, 11, 21, 25, 35, 37 and 39 for various jurisdictions, including BG, BY, CH, CN, CU, GE, IS, MA, MC, MD, ME, MK, NO, RO, RS, RU, TR, UA, ZM; and

2) International registration No. 836605, registered on 17 March 2004 for goods and services in International Classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37 and 39 for various jurisdictions, including AG, AL, AM, AU, AZ, BA, BG, BQ, BT, BY, CH, CN, CW, EE, GE, HR, IR, IS, KE, KG, KP, KR, KZ, LI, LS, LT, LV, MA, MC, MD, ME, MK, MN, MZ, NO, RO, RS, RU, SL, SX, SZ, TJ, TM, TR, UA, UZ, ZM.

It also has hundreds of national trademark registrations for Chile, Canada, Germany, Denmark, Israel, Australia, UAE, India, Egypt, Singapore, Malaysia, Thailand, Spain, USA, Jordan and many more.

The Complainant’s official website is at the domain name <electrolux.com> (created on 30 April 1996) and for Chile at <electrolux.cl> (created on 8 April 1997). It also owns hundreds of other domain names.

The Complainant has previously filed and prevailed in over 200 domain name dispute matters.

 The Complainant is present on the main social media platforms.  

The Complainant is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen, cleaning products and floor care products. In 1910, initially Electrolux was incorporated as Elektromekaniska AB. In 1919, Elektromekaniska AB merged with Swedish AB Lux, and Aktiebolaget Electrolux (Complainant) was established.

The Complainant led the development of the modern canister-type vacuum cleaner and the absorption refrigerator during the early part of the 20th century.

Electrolux launched its first vacuum cleaner – Lux I in 1912. In the 1920s, the company added absorption refrigerators to its product line. Other appliances soon followed, including washing machines in 1951, dishwashers in 1959 and food service equipment in 1962.

The Complainant’s well-known ELECTROLUX trademark is used today in connection with kitchen and cleaning appliances for both consumers and professional users. The company sells approximately 60 million household products in approximately 120 markets every year. In 2020, the Complainant had about 55,000 employees, and its sales amounted to USD 14.15 billion.

The disputed domain name <electrolux-chile.com> was registered on 24 April 2025, and currently does not resolve, as its status in WHOIS is listed as “ServerHold”. However, apparently the disputed domain name previously had an active website, which, although not archived or saved, is evidenced by recent Google searches for the website <electrolux-chile.com>. Apparently until recently, it resolved to a website appearing to offer the Complainant's products and with an active shopping cart.  

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Under paragraph 4(a) of the UDRP, (the Policy), a complainant can only succeed in administrative proceedings if the panel finds:

 (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 in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

 A complainant must prove that each of these three elements are present.

There is no doubt as to Rights, the mark is highly distinctive, and the Panel finds it is a very famous or well-known mark worldwide.

The test for identity is strict and they are not identical. But incorporation of the trademark combined only with a dictionary word may mean the domain name is confusingly similar to the complainant's registered mark. E.g., Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.” 

The disputed domain name is the word mark, together with a geographic term which is ignored in the similarity analysis. Adding a generic term, in front – or indeed after, a well-known name and mark does not prevent a finding of confusing similarity. Here, the Complainant’s registered trademark is reproduced in full in the disputed domain name <electrolux-chile.com>. The mere addition of a geographical term in a domain name does not avoid a finding of confusing similarity and the addition of Chile falls within that rule as has been held in many UDRP cases, for example, see AB Electrolux v. Wellington Fernandes Braz De Lima, Smart Serv, WIPO Case No. D2023-2504: “The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark ELECTROLUX since it contains this mark in entirety. The addition of the term “salvador” in the disputed domain name does not prevent a finding of confusing similarity as the relevant trademark remains clearly recognizable within the disputed domain name. See section 1.8 of the WIPO Overview 3.0.”

The addition of the country name for Chile, in fact it gives the impression that it is an official local or geographical representative or branch of the Complainant. That and the .com convey the impression that the site is official and compound impersonation and confusion. As to similarity, it is noted that the disputed domain name is a .com. While the suffix is disregarded, it can be relevant to the issue of impersonation and can suggest a domain is official.

The first limb of the Policy is made out and the Panel finds the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

As to the second factor, the disputed domain name does not currently resolve to an active website. However, upon its registration on 24 April 2025, it seems that it resolved to a website impersonating the Complainant’s official website. 

To demonstrate rights or legitimate interests in a domain name, under the UDRP paragraph 4(c) include the following:

(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

A complainant is only required to make out a prima facie case that a respondent lacks rights or legitimate interests and then the burden shifts to the respondent to show it has rights or legitimate interests in the domain name. If it fails to do so, the complainant is deemed to have satisfied the limb in paragraph 4(a) (ii). See WIPO Case No. D2003-0455, Croatia Airlines d. d. v. Modern Empire Internet Ltd.

This is not a proper name case. Past panels have held that a respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name. See the Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com>. The Respondent is not known by the disputed name in the WHOIS and is called Victoria Lagos.

The Complainant says the disputed domain name on its registration in April 2025, resolved to a website with an active shopping cart. The evidence is not comprehensive and the site itself was not captured and is now down. On the other hand, there is no evidence that the site was used for legitimate resales or distribution. Or that genuine products of the Complainant were legitimately sold. The Respondent has not come forward to explain or provide evidence of legitimate use and/or resales. 

Where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Respondent does not appear to be a genuine reseller—and they appear to hold themselves out as the Complainant or part of it without right or title. If they had a legitimate use or reason for it, they would have come forward with it. 

As to the final Policy limb, Bad Faith, the finding as to Bad Faith often follows from the second limb. If there is unfair and illegitimate use, there will often be bad faith. The Panel finds the Respondent could not have been unaware of the Complainant’s world-famous trademark in light of the Complainant’s reputation. The disputed domain name, on its registration in April 2025, resolved to a website, and it appears the Respondent was well aware of the mark and registered the disputed domain name with the intention of leveraging that reputation and goodwill and free-riding on it. The Respondent has failed to come forward and explain its selection of the name, and no current legitimate or fair use is evident on the face of the case. In the circumstances of the case, this matter satisfies the test in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

 In light of these particular circumstances, the Panel concludes that the Complaint has satisfied the requirements of paragraph 4(a)(iii).