WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aktiebolaget Electrolux v. S Internet Hizmetleri San Tic Ltd Sti, DNS Administrator Case No. D2010-0879 1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is S Internet Hizmetleri San Tic Ltd Sti, DNS Administrator of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 1, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On June 4, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 June 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2010.
The Center appointed Kaya Köklü as the sole panelist in this matter on June 30, 2010. 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 the Rules, paragraph 11, and since the Parties have not agreed otherwise, the language of the administrative proceedings is the language of the Registration Agreement (i.e., English).
On July 8, 2010, in response to a Panel Order sent to the Parties on July 7, 2010, the Complainant requested that its requested remedy concerning the disputed domain name be amended to that of cancellation (in lieu of the originally requested transfer of the disputed domain names) in light of the possible existence of trademark rights owned by third parties not participating in the present dispute but which mach relate to the disputed domain name .
The date scheduled for the issuance of the Panel's decision was July 18, 2010. 4. Factual Background
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. It is a leading and widely known producer of household appliances and equipment, in particular in the cleaning and kitchen sector.
For decades, the Complainant owns several hundred trademark registrations in various jurisdictions containing the marks ELECTROLUX and AEG. Furthermore the Complainant has also registered and is using its trademarks ELECTROLUX and AEG as domain names under several gTLDs and ccTLDs worldwide, i.e. and .
According to the Complaint, the disputed domain name was created on January 29, 2010; the disputed domain name was created on December 18, 2010 and the disputed domain name was created on December 19, 2010.
The Respondent is a company with its registered seat in Istanbul, Turkey.
When the Panel visited the disputed domain names on July 7, 2010, all three domain names were linked to an offered service for AEG and ELECTROLUX products. 5. Parties' Contentions A. Complainant
The Complainant argues that it is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries each year.
The Complainant argues that its trademarks AEG and ELECTROLUX enjoy a worldwide reputation and acquired the status as well-known trademarks within the areas for appliances and equipment for kitchen, cleaning and outdoor products.
The Complainant further concludes that its trademarks and its products and services designated by its trademarks have a good reputation and international recognition.
With its Complaint, the Complainant initially claimed the transfer of all three disputed domain names. In response to Administrative Panel Procedural Order No. 1 sent to the Parties on July 7, 2010, the Complainant amended its request concerning the disputed domain name and now requests the cancellation of this particular disputed domain name.
The Complainant argues that the disputed domain names are identical or at least confusingly similar to the Complainant's trademarks as they fully incorporate the Complainant's registered AEG and ELECTROLUX trademarks. The Complainant further argues that the only difference between the disputed domain names and the Complainant's trademarks is that the disputed domain names additionally comprise certain generic terms in the Turkish language like “servisi” (which means in the English language: “service”) and “beyaz esya servisi” (which means in the English language: “white (or kitchen) goods service”). The use of these generic terms may even add to the confusing similarity.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names and has registered and used the disputed domain names in bad faith.
In this regard, the Complainant states that it has never granted a permission of licence to the Respondent to use the trademark AEG and/or ELECTROLUX. In addition, the Complainant alleges that the Respondent has never used and does not intend to use the signs AEG and/or ELECTROLUX in connection with a bona fide offering of goods and services.
Finally, it is also argued that the Respondent must have known the Complainant's well-known trademarks well before the registration of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain names are identical or confusingly similar to the trademark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriate accept the provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this regard, it is noted that an independent research by visiting the Internet sites linked to the disputed domain names has been performed by the Panel. In addition, the Panel carried out a non-comprehensive trademark search for the mark PROFILO in Turkish trademark registers. The competence of the Panel to perform such independent research is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names , and are confusingly similar to the Complainant's trademarks.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the terms AEG and ELECTROLUX. As evidenced by the Complaint, the Complainant owns hundreds of AEG and ELECTROLUX trademarks registered in various jurisdictions worldwide, in particular also in Turkey.
Although not identical, the disputed domain names , and fully incorporate the Complainant's ELECTROLUX trademark. Furthermore, two of the disputed domain names additionally comprise the Complainant's trademark AEG.
The disputed domain names mainly differ from the Complainant's trademarks only through the addition of the generic Turkish words “beyaz esya servisi” and “servisi” for “white or kitchen goods” services. The Panel finds that the incorporation of such generic terms does not negate the confusing similarity between the Complainant's trademarks and the disputed domain names.
In other words, the Panel concludes that the disputed domain names which wholly incorporate the Complainant's registered trademarks ELECTROLUX and AEG are sufficient to establish confusing similarity for the purposes of the Policy (c.f. Aktiebolaget Electrolux v. Serbay Narin, WIPO Case No. D2009-1444; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).
The Panel is aware that the disputed domain name partly consists of another registered trademark of a third party. This part of the disputed domain name comprises the sign PROFILO, which is – according to the Panel's independent research in public registers – a registered Turkish trademark of a competitor of Complainant in household appliances, namely BSH Ev Aletleri Sanayi ve Ticaret A.S.
In line with previous UDRP decisions, the Panel finds that the addition of another trademark (owned by a person or entity which is not part of the proceedings) does not create a distinct domain name, capable of overcoming a claim of confusing similarity, Yahoo! Inc. And Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896; Educational Testing Service v. Atak Teknoloji Ltd. Sti., WIPO Case No. D2010-0479.
In light of the above, the Panel finds that all three disputed domain names are confusingly similar to the Complainant's trademarks ELECTROLUX and AEG and therefore concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that the Respondent has not demonstrated any right or legitimate interest in the disputed domain names.
While the burden of proof in principle rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as requiring the lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is only required to make out a prima facie case in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to demonstrate a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, license or any similar right to use the disputed domain names.
In the absence of a Response by the Respondent, there is no indication in the file that the Respondent is commonly known by the disputed domain names.
In addition, the Respondent has failed to demonstrate any of the three nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the domain names. In particular, the Respondent has failed to show that the Internet site linked to the disputed domain names has been used in connection with a bona fide offering of goods and services.
There is also no indication that the Respondent is making a legitimate noncommercial of fair use of the disputed domain names without the intent for commercial gain to misleadingly divert users or to tarnish the trademark at issue.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent has registered and used the disputed domain names in bad faith.
The Panel is well aware of the notoriety and reputation of the Complainant's trademarks ELECTROLUX and AEG. The Panel believes that the Respondent must have known of the Complainant's trademarks when registering the disputed domain names. This is particularly likely as both trademarks are also widely known in Turkey, where the Respondent has its registered seat, and all three disputed domain names have been registered well after the Complainant's trademarks AEG and ELECTROLUX have become widely known in Turkey and the world.
It rather appears that the Respondent has registered the disputed domain names solely for the purpose of creating an association with the Complainant, in particular its products and services. The Panel is convinced that the Respondent has intentionally registered the disputed domain names to offer services for ELECTROLUX and AEG products by creating the impression that this offer is made by or at least with the authorisation of the Complainant. The Panel is convinced that the Respondent has intended to mislead Internet users who may search for official repair services for their AEG and ELECTROLUX branded products.
On the basis of the current record, the Panel cannot conceive of any good faith use of the disputed domain names by the Respondent. The Panel rather finds that the Respondent's failure to respond to the Complaint even supports the conclusion that it has registered and used the disputed domain names in bad faith in order to mislead consumers.
The Panel therefore concludes that the disputed domain names were registered and used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy. 7. Remedy
As to the findings above, the Complainant has satisfied all three requirements of paragraph 4(a) of the Policy.
However, the Panel notes that one of the three disputed domain names, , incorporates not only the Complainant's trademark ELECTROLUX but also the trademark PROFILO, owned by BSH Ev Aletleri Sanayi ve Ticaret A.S., one of the Complainant's competitors in the Turkish market.
The Panel believes that a transfer of a domain name incorporating not only the Complainant's but also a competitors' trademark requires at least some kind of authorization from the relevant competitor, Yahoo! Inc. v. M & A Enterprises, WIPO Case No. D2000-0748; Educational Testing Service v. Atak Teknoloji Ltd. Sti., WIPO Case No. D2010-0479.
In response of the Administrative Panel Procedural Order No. 1 requesting the provision of such authorization from the competitor, the Complainant amended its initially requested remedy concerning the disputed domain name to that of cancellation.
In accordance with the amended remedy request, the Panel is convinced that the only fair and reasonable remedy for the disputed domain name is not the transfer but the cancellation of the same. 8. 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 disputed domain names and be transferred to the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel further orders that the disputed domain name be cancelled.
Kaya Köklü
Sole Panelist
Dated: July 17, 2010
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