The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Samet Bal of Istanbul, Turkey and Firat Parto of Istanbul, Turkey. 2. The Domain Names and Registrars
The disputed domain names and (the “Domain Names”) 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 December 28, 2011. On December 28, 2011, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the Domain Names. On December 29, 2012, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondents were listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was January 26, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 27, 2012. On January 31, 2012, the Center re-sent the Notification of Complaint and Commencement of Administrative Proceeding to “info@”, taken from the website to which one of the Domain Names resolved, and provided the Respondents with an additional five days to indicate to the Center by return email whether they intended to participate in these proceedings. Accordingly, the due date for the submission of a Response, or an indication that the Respondents intended to submit any such response, was set at February 4, 2012. The Respondents did not submit any response. Accordingly, the Center re-notified the Respondents’ default on February 6, 2012.
The Center appointed Ian Lowe as the sole panelist in this matter on February 14, 2012. 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, Electrolux, is a Swedish company founded in 1901. It is a world-leading producer of appliances and equipment for kitchen and cleaning. It sells more than 40 million products to customers in 150 countries every year. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers, sold under well-known brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, Zanussi and Frigidaire. In 2010, Electrolux had sales of SEK 106 billion and 52,000 employees.
The Complainant has registered the trademarks ELECTROLUX and AEG as word and figure marks in several classes in more than 150 countries all over the world. The Complainant has also registered the trademarks ELECTROLUX and AEG as domain names under almost 700 top-level domains worldwide.
The Domain Names were both registered on January 17, 2011. At the date of the Complaint, the Respondent Samet Bal was the registrant of the Domain Name and the Respondent Firat Parto was the registrant of the Domain Name . “Yetkili servis” is Turkish for “authorized service”.
At the date of the Complaint, the Domain Names resolved to virtually identical websites (the “Websites”) offering services for household products. Both websites appear to be in the Turkish language, but to comprise listings of service centers by region or district. In the case of “www.”, each of the districts and service centers includes the word “Electrolux” and each webpage includes the Electrolux device and stylized word mark in the top left hand corner. The website at “www.” appears to comprise exactly the same lists, but in each case the word “Electrolux” is replaced by the word “AEG” and each webpage includes the stylized AEG mark in the top left hand corner. Both websites include the banner “ÇAĞRI MERKEZİ” in the top right hand corner of every web page, followed by the two same telephone numbers “0212 437 33 30” and “0507 695 55 12”.
On April 20, 2011 the Complainant sent a cease and desist letter by email (info@) to the Respondent Firat Parto (who was then shown as the registrant of the Domain Name with that email address). After a reminder, Mr Parto explained in an email dated May 3, 2011 that he just designed the website and that he was transferring the Domain Name to his client. On July 7, 2011, the Complainant sent a further copy of the cease and desist letter to the Respondent Samet Bal who was now shown as the registrant of the domain name at info@. This email was apparently not delivered. The Complainant followed up with a further email to Firat Parto who responded that he had informed his customer. 5. Parties’ Contentions A. Complainant
The Complainant claims extensive rights in the trademarks AEG and ELECTROLUX by virtue of substantial long-term use in commerce and its numerous registrations around the world, including Community Trademark No. 77925 ELECTROLUX in various classes registered on September 16, 1998, Community Trademark No. 5967 AEG in various classes registered on November 24, 1998 and Turkish trademark no. 78814 ELECTROLUX.
It further contends that the addition of the generic term “yetkiliservis" meaning “authorized service” does not detract from the distinctiveness of the marks ELECTROLUX and AEG and that for the purposes of comparison the gTLD suffix “.com” should be ignored. The Complainant therefore claims rights in trademarks that are confusingly similar to the Domain Names.
According to the Complainant, the Respondents have never been authorized by the Complainant to use the trademarks ELECTROLUX and AEG. They are not authorized dealers or service engineers of the Complainant and have never had a business relationship with the Complainant. The Respondents’ use of the Domain Names for websites bearing representations of the Complainant’s trademarks without consent, falsely implying some association with the Complainant, does not constitute a legitimate interest in respect of the Domain Names. The Respondents do not qualify to fulfill the requirements for a bona fide offering set out in the Oki Data case (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, ), not least because there is no disclaimer on the websites making it clear that there is no association between the Respondents and the Complainant. The Complainant therefore contends that the Respondents have no rights or legitimate interests in respect of the Domain Names.
Finally, the Complainant asserts that the Respondents must have been aware of the Complainant’s rights in the trademarks ELECTROLUX and AEG when they registered the Domain Names and must have done so with a view to misleading Internet users into believing, falsely, that the Respondents were in some way connected to, sponsored by or affiliated with the Complainant or its business, or that the Respondents’ activities were approved or endorsed by the Complainant. The Respondent has registered the Domain Names with the intention of offering services and to create the false impression that the Respondents or those listed on the Websites are authorized repair and service providers for the Complainant’s products. The Respondents are misleadingly diverting consumers for their own commercial gain and must therefore be considered to have registered and be using the Domain Names in bad faith. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Procedural issue - multiple Respondents
The Complaint is by a single Complainant against two respondents in respect of two domain names. Although paragraph 10(e) of the Rules generally gives Panels the power to consolidate multiple domain name disputes, in accordance with the Policy and the Rules, neither the Policy nor the Rules expressly provide for the consolidation of more than one respondent in a single administrative proceeding. Nevertheless, a number of panels have articulated principles as to when this is permissible and appropriate and this is reflected in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). As the panelist found in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, :
“the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.”
In this case, the two Domain Names were registered on the same day by the Respondent Firat Parto. When he was challenged by the Complainant in respect of the Domain Name , he responded that he had merely designed the website in question and stated that he was transferring the Domain Name to his customer. The Domain Name was at about the same time transferred to the Respondent Samet Bal. The Websites to which the Domain Names resolve are virtually identical save only for the use of ELECTROLUX in one case and AEG in the other. The DNS servers for both Websites are the same.
In the circumstances, the Panel finds on the balance of probabilities that the Domain Names are subject to the common control of the Respondents and determines that it is efficient, fair and equitable for the two Respondents to be consolidated in this single administrative proceeding. 7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established uncontroverted, widespread rights in the trademarks ELECTROLUX and AEG. The Panel accepts that the addition of the non-distinctive term “yetkiliservis” meaning “authorized service” does not detract from the distinctiveness of the marks, particularly to Turkish Internet users likely to be attracted to the Websites. The gTLD suffix “.com” may be disregarded. The Panel therefore finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
As paragraph 2.1 of the WIPO Overview 2.0 states, the consensus view is that once a complainant makes out a prima facie case on this element then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. The Respondent Firat Parto suggested in email exchanges with the Complainant that he understood his customer was authorized by the Complainant but he produced no evidence that this was the case and the Complainant denies it. No Response was filed by him or by his customer. The Respondents have chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint.
The Respondents have not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot have any rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
The Panel considers that the Respondents must have intentionally registered the Domain Names incorporating the Complainant’s marks, ELECTROLUX and AEG, and did so with a view to attracting Internet users to the Websites and the links to various entities there listed as household appliance service centers. The Respondents are misleadingly diverting consumers to the Websites, in the mistaken belief that the listed service centers are authorized by the Complainant. The Respondents are accordingly using the Domain Names to attempt to attract Internet users to the websites for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Websites. In the circumstances, the Panel finds that the Respondents registered and are using the Domain Names in bad faith. 8. Decision
For 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.
Ian Lowe
Sole Panelist
Dated: February 28, 2012
Full & Egal Universal Law Academy