The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Manuel Negrin Perdomo of Las Palmas de Gran Canaria, Spain. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2014. On March 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
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 March 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 28, 2014. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a global leader in home appliances as well as appliances for professional use. The Complainant offers innovative solutions for households and businesses, with products such as refrigerators, dishwashers, washing machines, cookers, vacuum cleaners, air conditioners and small domestic appliances. The Complainant sells more than 50 million products to customers in more than 150 markets every year. The largest of these markets are in Europe, North America and Latin America. The Complainant sells numerous brands, including Electrolux, AEG, Zanussi, Frigidaire and Electrolux Grand Cuisine.
The Complainant's AEG brand was founded in 1883 in Berlin by Emil Rathenau. AEG was first known as Deutsche Edison Gesellschaft für angewandte Elektricität (DEG) but was renamed to Allgemeine Elektricitäts Gesellschaft (AEG) in 1887. Initially, AEG only produced electric light bulbs. Over the years, it evolved to include everything from cars, trains, power tools and electric machines to instruments, cables, nuclear power, motors and microelectronics, among other things.
As a result of the widespread use and worldwide reputation of products bearing the AEG trademark (the "AEG Mark"), it has acquired considerable value and goodwill throughout many countries of the world. The Complainant has registered the AEG Mark as word and device marks in several classes in countries all over the world, including Spain. The AEG Mark was registered long before the registration of the Disputed Domain Name. The Complainant has also registered approximately 507 domain names incorporating the AEG Mark in numerous generic top-level domains ("gTLD") and country code top-level domains worldwide. In particular, the Complainant has registered and uses which resolves to "www.", which is the Complainant's official Spanish website for the AEG brand. This website for the Complainant's AEG brand includes information and listings about its products and services, including repair services for products bearing the AEG Mark.
The Respondent registered the Disputed Domain Name on September 7, 2013. The Disputed Domain Name consists of the AEG Mark preceded by the prefix "serviciotecnico" which translates to "technical service" in Spanish, and is followed by the gTLD ".com". The Disputed Domain Name resolves to a website offering repair services for AEG household products and on which the AEG logo is prominently displayed. The AEG Mark is mentioned approximately 60 times on every page of the website, as well as in the metatags of the pages on the website.
On December 2, 2013, the Complainant sent a cease and desist letter to the Respondent via email, advising the Respondent that the unauthorized use of the AEG Mark in the Disputed Domain Name violated the Complainant's rights. The Complainant requested a voluntary transfer of the Disputed Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of
pocket expenses). The Respondent did not reply to the letter. The Complainant sent two additional reminders on December 10, 2013 and December 18, 2013, respectively. Despite the reminders, the Respondent never replied. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
- The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's AEG Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's AEG Mark. This element consists of two parts: First, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the AEG Mark based on both longstanding use as well as its numerous national and international trademark registrations for the AEG Mark. The Disputed Domain Name consists of the AEG Mark preceded by the descriptive words "serviciotecnico" connected by a hyphen, and followed by the gTLD ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word or words to a trademark is insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. See also Hoffman-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not avoid a determination that the domain name at issue is confusingly similar); Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434 (same); Weight Watchers International, Inc. v. Kevin Anthony,WIPO Case No. D2011-2067 (same). This is especially true where, as in the present case, the descriptive or generic words "serviciotecnico" are associated with the Complainant and its goods or services, particularly, in this case, the Complainant's technical repair services for its AEG products. See, e.g., Gateway, Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Further, although the Disputed Domain Name contains a hyphen between the words "serviciotecnico" and "aeg", this is irrelevant for purposes of the Policy because the presence or absence of a punctuation mark such as a hyphen cannot on its own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew,WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214 (hyphens do not "serve to dispel Internet user confusion here"); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 ("[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY").
Finally, the addition of a gTLD such as ".com" to a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a)(i) of the Policy has been met by the Complainant. 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 in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Indeed, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its AEG Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain and to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's AEG Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
Accordingly, the second element of paragraph 4(a)(ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that a respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicating that a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Circumstances indicating that by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location or of a product on respondent's website or location.
This Panel finds that based on the record of this case, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of the Disputed Domain Name reproducing the Complainant's AEG Mark is aimed to disrupt the Complainant's business by diverting Internet users who are searching for the Complainant's product and service from its official website as well as to prevent the Complainant from registering the Disputed Domain Name. The Respondent's action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant's business, deceive customers and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Thus, the Panel concludes that the Respondent has intentionally registered the Disputed Domain Name with the intention of providing competitive services and creating the false impression that the Respondent is authorized by the Complainant to create the website. This is particularly true since the website to which the Disputed Domain Name resolves contains the AEG logo, AEG metatags, and claims to be a technical repair and service provider for the Complainant's AEG products.
Second, the Respondent knew or should have known of the Complainant's rights in its AEG Mark when registering the Disputed Domain Name. The Complainant's AEG Mark is well-known and widely used and has been in use by the Complainant for many decades. Thus, it strains credulity to believe that the Respondent had not known of the Complainant or its AEG Mark when registering the Disputed Domain Name or creating the website to which the Disputed Domain Name resolves. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Third, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's AEG Mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its AEG Mark. For example, in Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031, the website to which the domain name resolved contained the complainant's ELECTROLUX logo and trademark. There, the Panel stated that "the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website." The Panel in the present case concludes that these circumstances apply here as well where the Respondent is using the AEG Mark and displaying the AEG logo on its website, without adequately disclosing the nature of its relationship, if any, with the Complainant – in fact if anything, the Respondent attempts to give the appearance being affiliated with the Complainant, e.g., by use of the Complainant's Mark and logo including in the "copyright notice".
Further, the Panel finds that the Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letters sent by the Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
Finally, the Panel notes that the use and registration of the Complainant's trademarks in bad faith is not an isolated incident i.e., the Complainant is a frequent target of bad faith cybersquatters. Numerous UDRP cases have involved the same Complainant and similar circumstances as in the present case and in each instance, the domain name at issue was transferred to the Complainant because the Complainant was able to prove the three elements set forth in the Policy, paragraph 4(a)(i-iii). See e.g., Aktiebolaget Electrolux v. Mehmet Kirci,WIPO Case No. D2010-0305 (); Aktiebolaget Electrolux v. Sas Adrian,WIPO Case No. D2010-0336 (); Aktiebolaget Electrolux AB v. Sun Qifeng,WIPO Case No. D2010-0633 (); AB Electrolux v. Nomad Marketing, Ltd.,WIPO Case No. D2010-1205 (); Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor,WIPO Case No. D2010-1277 (); Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388 (); Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk,WIPO Case No. D2011-0403 ( and ); AB Electrolux v. Pablo Rodriguez Guirao, Case No. D2011-0729 ( and ); Aktiebolaget Electrolux v. Electrolux International (HK) Co., Ltd.,WIPO Case No. D2011-0752 (); and Aktiebolaget Electrolux v. Nigel Cosans,WIPO Case No. D2012-0231 ().
Accordingly, the third element of paragraph 4(a)(iii) of the Policy has been met by the Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: May 12, 2014
Full & Egal Universal Law Academy