WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aktiebolaget Electrolux v. Orhan Gurbuz Case No. D2009-0867 1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden represented by Melbourne IT Digital Brand Services (AB) of Stockholm, Sweden.
The Respondent is Orhan Gurbuz of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain names , and (the “Disputed Domain Names”) are registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2009. On June 30, 2009, the Center transmitted by e-mail to B, Inc. a request for registrar verification in connection with the Disputed Domain Names. On July 1, 2009, B, Inc. transmitted by e-mail to the Center its verification response confirming that the 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, the Complainant filed an amendment to the Complaint on July 3, 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 the Respondent of the Complaint, and the proceedings commenced on July 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2009. On July 17, 2009, Complainant requested a suspension of the proceedings, which were to be reinstated on August 15, 2009. On August 17, 2009, Complainant requested a further suspension. On August 19, 2009, Complainant requested that the proceedings be reinstituted. On August 20, 2009, the Center notified the parties that the proceedings had been reinstituted and that the due date for the Response was September 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 7, 2009.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 9, 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.
In accordance with paragraph 11 of the Rules, the Panel finds that the language of the proceedings is English, as confirmed by the relevant Registrar. 4. Factual Background
Complainant states that is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Further, Complainant states that it is “a world leading producer of appliances and equipment for kitchen and cleaning.” Together with Electrolux Home Products, Inc. (“Electrolux”) – an entity that Complainant states is “a company within the Electrolux group” and on behalf of which Complainant is authorized to act in this proceeding – Complainant states that it had sales in 2007 of SEK 105 billion and employed 56,900 people and that it has annual sales of 40 million products to customers in 150 countries. Complainant further states, and provides documentation to support, that Electrolux is the owner of numerous trademark registrations worldwide that consist of or include the mark FRIGIDAIRE, including in Turkey. The Panel independently observes, via a search of the website for the U.S. Patent and Trademark Office, that Electrolux is also the owner of numerous U.S. trademark registrations, including U.S. Reg. No. 364,709 for the mark FRIGIDAIRE for use in connection with electric ranges, which was first used in commerce on October 7, 1937, and registered on February 14, 1939.1 Collectively, the FRIGIDAIRE trademarks owned by Electrolux are referred to hereafter as the “FRIGIDAIRE Trademarks”.
The Disputed Domain Names were registered on October 20, 2008 (), October 21, 2008 () and January 4, 2008 (). 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the FRIGIDAIRE Trademarks because “servisi” is a Turkish word that means “service” in English “a generic term which doesn't distinguish a company.” Further, “buzdolabi” is a Turkish word that means “refrigerator” in English and “camasirmakines” is a Turkish word that means “washing machine” in English – “terms… closely affiliated with the Complainant's business and products.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because Complainant has not found any registered trademarks or trade names owned by Respondent that correspond to the Disputed Domain Names, nor has Complainant “found anything that would suggest that the Respondent has been using FRIGIDAIRE in any other way that would give him any legitimate rights in the name.
- The Disputed Domain Names were registered and are being used in bad faith because Respondent “was selling products of the brand FRIGIDAIRE on the website of his company” and that Respondent “intentionally chose the Domain Names, based on a registered well-known trademark in order to generate more traffic to his own business.” Furthermore, there is no disclaimer on Respondent's websites or anything that clarifies his relationship with Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which [it] has rights.”
Based on the information provided by Complainant, including copies of relevant trademark certificates of registration, as well as the Panel's independent research, the Panel is convinced that Complainant has rights in the FRIGIDAIRE Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the FRIGIDAIRE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “frigidairebuzdolabiservisi”, “frigidairecamasirmakinesiservisi” and “frigidaireservisi”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).
Without anything in the record to the contrary, the Panel accepts as accurate Complainants statements that elements of the Disputed Domain Names contain Turkish words that, in English, mean service, refrigerator and washing machine. The Panel agrees with Complainant that these words are descriptive of Complainant's goods and services. These words “do[] not necessarily distinguish [the] domain name from [the] trademark” and “may even add to the confusing similarity.” Christian Dior Couture v. Versata Software, Inc.,WIPO Case No. D2009-0102. See also Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”) (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748).
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the FRIGIDAIRE Trademark and that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied, also in light of the Panel's findings below, that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Complainant appears to allege that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In support thereof, Complainant has provided printouts of pages from websites associated with each of the Disputed Domain Names. However, it appears as if only one of these websites, using the domain name , would have contained any content. This website was in a language other than English, and Complainant has not provided a translation of the content on it. However, the Panel observes that the website included a logo using the FRIGIDAIRE Trademark and an image of what appears to be a washing machine. Even though it is not entirely clear to the Panel how Respondent was using this website, the Panel notes Respondent has not disputed Complainant's allegations, as set forth in the Complaint and/or demand letters sent to Respondent prior to filing the Complaint, that Respondent's use of the Disputed Domain Names infringes Complainant's rights because Respondent has no relationship with Complainant or authorization from Complainant to use the FRIGIDAIRE Trademark. (Moreover, the Panel notes that currently the disputed domain names do not resolve to any websites.)
Complainant cites the leading decision Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, in which the panel stated that a Respondent must “actually be offering the goods or services at issue”, “use the site to sell only the trademarked goods”, “accurately disclose the registrant's relationship with the trademark owner” and “not try to corner the market in all domain names” to make a bona fide use of a domain name under paragraph 4(a)(ii) of the Policy. Complainant appears to allege by analogy that these same requirements apply to paragraph 4(a)(iii) of the Policy, although the Oki Data decision does not expressly state as much. In any event, this Panel is prepared to conclude that Respondent's apparent (prior) offering of goods and/or services under the domain name without any indication that Respondent sells only FRIGIDAIRE-branded goods or services and that Respondent does not appear to disclose its relationship (or, more accurately, its lack of a relationship) with Complainant is likely to cause confusion under paragraph 4(b)(iv) of the Policy.
As for the domain names and , the lack of active websites does not preclude a finding of bad faith. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.2:
The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In this case, the FRIGIDAIRE Trademark has been used for many decades worldwide, Respondent failed to respond to the Complaint and Respondent is also the registrant of at least one domain name () that this Panel already has concluded Respondent registered and is using in bad faith. Accordingly, this Panel concludes that bad faith exists with respect to the domain names and as well.
Even though not conclusive, the Panel also finds that Respondent's behavior during these proceedings in proposing to transfer the disputed domain names to Complainant, but not following up with such an offer once the proceedings were suspended, further suggests Respondent's bad faith. 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 the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: September 23, 2009
1 “The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions (paragraph 4.5).
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