WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AB Electrolux v. Paliz Co., Network Supporters Co.Ltd Case No. D2009-1225 1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services of Sweden.
The Respondent is Paliz Co., Network Supporters Co.Ltd of Canada. 2. The Domain Name and Registrar
The disputed domain name is 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 September 15, 2009. On September 16, 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 name. On September 17, 2009, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 September 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 12, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on October 19, 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
The Complainant is a Swedish company established in 1901. The Complainant is a leading producer of appliances and equipment for kitchens and cleaning. The Complainant sells its products in more than 150 countries. In 2007 the Complainant had sales of SEK 105 billion and 56,900 employees.
The Complainant is the owner of registered marks for AEG in various countries, including in Canada where the Respondent has its address. The Complainant has also registered its AEG trademark as a domain name in several gTLDs and ccTLDs, including and .
The disputed domain name was registered on November 29, 2008 (as indicated by the “creation date” in the WhoIs record). The Complainant provides a copy of the website to which the disputed domain name reverted on September 14, 2009. On that date, and at the date of this decision, that website included the statement “AEG-SAM is the producer and supplier of protection control, circuit breakers and switchgear system. We check all production with the highest standards and effectively assist customers to use our products.” The main page for the website also includes links under titles such as “Home”, “Products”, “AEG In The World”, and “About Us”. The latter link reverts to a page which relates to “AEG – Signum”, and starts by stating that “AEG SIGNUM is one of the leading Training- and consulting companies in Germany, operating on 7 locations.” 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to its AEG mark. The dominant part of the disputed domain name is the term “aeg”, which is confusingly similar as well as identical to the registered trademark AEG. The Complainant says that the term “sam” generic and, as such, does not distinguish the term “aeg”. The Complainant says that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, and the Respondent has not been given permission by the Complainant to use its trademark. The Complainant says that the Respondent's website has the look and feel of an official AEG website. That website also displays information about AEG-Signum, which has a license to use the AEG mark. But AEG-Signum has no connection with the Respondent or the disputed domain name.
The Complainant claims that the Respondent registered and has used the disputed domain name in bad faith. The Complainant sent ‘cease and desist' letters to the Respondent but received nothing in reply. The Complainant claims that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion. And, since the Respondent uses the Complainant's mark on its website, it is obvious that it is well-aware of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions, or make any other communications in connection with this case. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
For the Complainant to make its case under paragraph 4(a)(i) of the Policy, it must prove that it both has rights in a mark, and that the disputed domain name is identical or confusingly similar to that mark. For the purpose of comparison, it is well established that the “.com” extension is to be disregarded as only a technical aspect of the domain name.
The Complainant clearly has rights in a mark for the purpose of paragraph 4(a)(i) of the Policy. In that connection, the Complainant provided evidence of having registered rights in various countries for the mark AEG. The Complainant's rights in its AEG mark have also been recognized in previous decisions under the Policy: e.g. Aktiebolaget Electrolux v. Gokhan Kazak,WIPO Case No. D2008-1602; AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777.
The question then is whether the relevant component of the disputed domain name – “aeg-sam” – is confusingly similar to the Complainant's registered AEG mark (since it is self-evidently not identical to that mark). The Panel considers that, on balance, the disputed domain name is confusingly similar to the Complainant's mark. The Complainant's registered mark is entirely and prominently incorporated in the disputed domain name. Prior panels have found that the incorporation of a complainant's trademark in a disputed domain name can be sufficient for a finding of confusing similarity (see e.g. Nokia Group v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782.) Added to this, the Complainant's mark is the first-appearing element in the disputed domain name. It is separated from the word “sam” by a hyphen, which serves to highlight the letters “aeg”. The Complainant's mark is relatively well-known, which therefore creates a higher risk of confusion, at least for that portion of the public that may be familiar with the Complainant and its mark.
The Panel does not consider that the addition of the letters “sam”, after the hyphen, removes the potential for confusion. This is not because, as the Complainant claims, the term “sam” is generic, and does not therefore distinguish the mark. The Complainant does not explain why the term “sam” should be considered generic. It does not strike the Panel as an obviously generic or descriptive term. There was nothing in the case file which provided a clear indication of why the term “sam” might have been chosen by the Respondent.
Regardless, the term “sam” is clearly and prominently separated from the Complainant's mark in the disputed domain name by a hyphen. The term “sam” is a short addition. There is no evidence in this case that it has any distinctive meaning, or any meaning at all, when used in combination with the term “aeg”.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant will have established its case if it makes a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name. Having made out such a case, the evidentiary burden shifts to the Respondent to demonstrate such rights or legitimate interests (see e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and paragraph 2.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
In this case, the Complainant has made such a prima facie case against the Respondent. The Complainant states that it has not licensed or otherwise authorized the Respondent to use any of its marks, including to use those marks in a domain name. The Complainant also states that it has not found any trademarks or tradenames of the Respondent correspondent to the disputed domain name.
The Respondent has chosen not to provide a Response. The Respondent has therefore not demonstrated any rights or legitimate interests in the disputed domain name. There is otherwise no evidence in the case file that might support the Respondent having such rights or legitimate interests, including those illustratively set out in paragraphs 4(c)(i)-(iii) of the Policy.
For these reasons, the Panel finds that the Complainant has made out its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy next requires the Complainant to prove that the Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a number of illustrative circumstances which may be evidence of bad faith under paragraph 4(a)(iii):
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The evidence in this case does not point to one particular example, above another, of bad faith as set out in paragraph 4(b) of the Policy. But, those examples are only illustrative. Taken together, and in the absence of any explanation to the contrary from the Respondent, the evidence strongly supports a finding of bad faith in this case. The common theme of the examples of bad faith set out in paragraph 4(b) of the Policy is that bad faith may be found where a respondent intentionally targets a complainant and its mark, and seeks to unfairly exploit that complainant's mark. As argued by the Complainant here, the nature of the website to which the disputed domain name reverts, leaves little doubt that the Respondent was aware of the Complainant and its mark. That website refers to the Complainant's mark, as well as entities closely associated with the Complainant and licensed to use the Complainant's AEG mark. The Respondent's website advertises commercial services. As such, there is a reasonable inference that the Respondent is using the disputed domain name, which is confusingly similar to the Complainant's mark, to commercially benefit from potential confusion with the Complainant's AEG mark. In the circumstances of this case, the Panel considers that such a use is sufficient to demonstrate bad faith for the purpose of paragraph 4(b) of the Policy.
The Complainant also argues that the Respondent's failure to respond to its earlier letter of demand is supportive of an inference of bad faith. In this connection, the Complainant purports to quote from the panel decision in Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. But that case contains nothing that would support such a proposition. Instead, the panel in that case found that it was not necessary to make any finding on whether a failure to respond to a letter of demand supported a finding of bad faith. However, this Panel is aware of cases in which the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith (e.g. News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623. See also Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460.) Where combined with other evidence of bad faith, this Panel takes a similar view. This Panel would usually expect a respondent, who believes it is acting legitimately, to respond to a claim that it is not.
The Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: November 2, 2009
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