WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AB Electrolux v. Ilgaz Fatih Micik Case No. D2009-0777 1. The Parties
Complainant is AB Electrolux, Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Ilgaz Fatih Micik, Istanbul, Turkey. 2. The Domain Names and Registrars
The disputed domain names and are registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2009. On June 12, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain names. On June 16, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 24, 2009. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009. Respondent did not submit a response within the due date. Accordingly, the Center notified the Respondent's default on July 16, 2009.
On July 21, 2009, Respondent submitted an email to the Center, acknowledging that the Complaint notification and amendments were received. Respondent's email informed the Center that “the page design was done by a web hosting company and whatever the mistake was isn't done on purpose. I am ready for any changes that needs to be done to solve the problem. Please let me know what I should do to fix the situation.” In response, the Center replied to Respondent on July 22, 2009, copying Complainant. The Center acknowledged receipt of Respondent's email and stated that the email would be brought to the Panel's attention.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 22, 2009. 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
Complainant has registered the trademarks FRIGIDAIRE, ELECTROLUX, and AEG as word marks for appliances and equipment for kitchen, cleaning and outdoor products in several classes all over the world. Complainant has also registered the trademarks FRIGIDAIRE, ELECTROLUX, and AEG as domain names under several gTLDs and ccTLDs. Complainant has several registered trademarks in Turkey for the terms FRIGIDAIRE, ELECTROLUX, and AEG. The earliest protection dates as listed in the Turkish government trademark registry with respect to each trademark are as follows: FRIGIDAIRE (1979); ELECTROLUX (1996); and AEG (2005). See “”.
The disputed domain names were registered on October 24, 2008. The disputed domain names do not presently resolve to active pages.1 5. Parties' Contentions A. Complainant
Complainant avers that Electrolux is a Swedish company founded in 1901 and that Complainant is a leading producer of appliances and equipment for kitchens, cleaning, and outdoor use.
Complainant alleges that its FRIGIDAIRE, ELECTROLUX, and AEG marks are well known.
Complainant alleges that the disputed domain names are confusingly similar to Complainant's marks, FRIGIDAIRE, ELECTROLUX, and AEG. Complainant contends that the addition of the Turkish suffixes “servisi” and “beyazesya” (meaning “service” and “white goods,” respectively) is not relevant and does not reduce the confusing similarity which results from Respondent's adoption of its trademarks in the dominant portion of the disputed domain names. Complainant also contends that Respondent is exploiting the goodwill and image of Complainant's trademark, which may result in dilution and other damage to Complainant.
Complainant contends that Respondent registered the disputed domain names after the vast majority of registrations for the FRIGIDAIRE, ELECTROLUX and AEG marks were completed. Complainant avers that Respondent has no connection with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the trademarks. Complainant appends to its Complaint annexes with screen shots of the web pages to which the disputed domain names routed when they were active pages. Stating that the home pages for each of the two disputed domain names are identical, Complainant notes that the pages contain images of Complainant's brand logos, and offer services, products and information about the corporate background of Respondent.
Complainant contends that Respondent has no legitimate interest in the disputed domain names and that Respondent's use of the domain names cannot create a legitimate interest or be considered as bona fide, citing, among other cases, Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, and Saab Automobile AB et al. v. Joakim Nordberg,WIPO Case No. D2000-1761.
Contending that Respondent registered and is using the disputed domain names in bad faith, Complainant notes that its marks have the status of well-known trademarks, and that, because Respondent's web page offers services and products under Complainant's trademarks, the value and goodwill associated with the marks could not have been unknown to Respondent. Complainant states:
“The Respondent is an unauthorized reseller and there is no disclaimer on the website that discloses the registrant's relationship with the trademark owner. The Domain names are confusingly similar to the trademarks ELECTROLUX, AEG respectively FRIGIDAIRE. Any use of the Domain names, in connection with a website, would create an impression of an association with the Complainant and as such would suggest opportunistic bad faith. InWIPO Case No. D2000-0163 Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, the Panel argued that the domain name was ‘so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.'”
Complainant avers that in early March 2009, it sent a cease and desist letter to Respondent respecting the domain name. After receiving no response, Complainant avers, it sent reminders on March 13, 2009 and May 14, 2009 (the last time translated into Turkish), which also went unanswered. Complainant avers that it sent a cease and desist email to Respondent on June 2, 2009 respecting the domain name and also received no response.
On the basis of the above, Complainant concludes that Respondent must be considered to have registered and be using the disputed domain names in bad faith. Complainant seeks transfer of the disputed domain names. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). For each disputed domain name, Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not respond to the allegations of the Complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that Respondent's domain names are confusingly similar to Complainant's marks.
Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The first domain name in dispute, , adopts two of Complainant's widely known trademarks in their entirety, adding only the generic term “servisi,” meaning “service” in Turkish. The Panel finds that Respondent's inclusion of two of Complainant's trademarks in the same domain name increases the likelihood that Internet users would be confused and associate the disputed domain name with Complainant. The Panel further finds that Respondent's addition of the generic term “service” does not reduce that confusion. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The second disputed domain name, , also includes one of Complainant's widely known trademarks. The addition of the descriptive term “beyazesya” (Turkish for “white goods”) does not negate the confusion created by Respondent's complete inclusion of the FRIGIDAIRE trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, supra; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., supra; Hoffmann-La Roche Inc. v. Aneko Bohner, supra. In fact, given that Complainant's mark is associated with white goods, the Panel finds that the addition of the term “beyazesya” to Complainant's mark simply increases the confusion that Internet users would experience. Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark….”).
The Panel finds therefore that the disputed domain names are confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)–(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Respondent's websites, according to the annexes to the Complaint, offered products, services, and information respecting Respondent's business.2
In the absence of a response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the ELECTROLUX, AEG, or FRIGIDAIRE marks in its domain names and that Respondent is not commonly known by the disputed domain names. The Panel finds that Respondent is seeking to attract Internet users through Complainant's widely known marks for Respondent's own commercial purposes.
The Panel therefore concludes that Respondent's use of the disputed domain names demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain names. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds that since the websites are currently inactive, there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain names.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using domain names to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for domain names and a respondent's failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy. E.g., id.
The Panel finds that Respondent registered the disputed domain names with awareness of Complainant's marks, which had already been registered in many countries including Turkey, and used for several years. The Panel infers that the domain name registrations were made with the intention of trading on the value of Complainant's mark, as demonstrated by the screen shots of Respondent's websites which displayed Complainant's logos. The Panel finds that Respondent deliberately attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant's marks. The Panel concludes, therefore, that Respondent registered the domain names in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The Panel also concludes that the circumstances show bad faith use of the domain names by Respondent, as elaborated below.
First, Complainant has alleged that Respondent is an unauthorized reseller. The Panel accepts these uncontroverted allegations as true. The websites to which the disputed domain names previously routed omitted any attempt at a disclaimer or notifying users of Respondent's lack of a relationship with Complainant and its trademarks.
Second, while the record demonstrates that Respondent once used the websites to which the disputed domain names route to display offerings related to white goods and Respondent's company, the websites are no longer active. The Panel therefore considers that Respondent is presently engaged in passive holding, a practice which has been held to constitute use of domain names in bad faith. Telstra Corporation Limited, supra; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, cited in Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
Third, Respondent failed for several months to respond to multiple notices from Complainant. Respondent also refrained to meet the deadline for responding to the Complaint and still has not replied to the Complaint's allegations. Only after expiration of the deadline for response to the Complaint did Respondent send correspondence to the Center, offering to take steps to address Respondent's own abuse of the disputed domain names.
At this late hour, the Panel considers that there is little that Respondent can do to remedy its conduct. With the addition of the word “servisi” to Complainant's ELECTROLUX and AEG trademarks in one instance - and the addition of the words “beyazesya-servisi” to Complainant's FRIGIDAIRE trademark in the other instance - the Panel finds that there is no conceivable good faith use for the disputed domain names by Respondent. There is nothing, therefore, that Respondent could do to remedy its abusive registrations other than transferring the disputed domain names to Complainant or voluntarily cancelling the registrations. Complainant already made several requests to Respondent to transfer; these requests Respondent chose to ignore.
Having refrained from replying to the allegations of the Complaint, Respondent has failed to rebut Complainant's contention that the registrations are being used in bad faith.
The Panel therefore concludes that, under the circumstances, the disputed domain names were registered and are being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.3 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: July 31, 2009
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