The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is serkan candan, / Domain Admin, Istanbul, umraniye, Turkey / Privacy Protection Service INC d/b/a PrivacyP, Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 4, 2014.
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 April 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2014.
The Center appointed Richard Tan as the sole panelist in this matter on June 9, 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. 4. Factual Background
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919.
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, including in Australia, for its goods and products, which include appliances and equipment for kitchen, cleaning and outdoor products. It also owns domain names which use the marks ELECTROLUX and AEG separately and in combination, including
and .
The Respondent registered the disputed domain name on December 7, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name registered by the Respondent comprises the string “electrolux” and “aeg”, which are identical to the Complainant’s registered trademarks, ELECTROLUX and AEG, which have been registered by the Complainant as trademarks and domain names in numerous countries all over the world. It contends that it sells 40 million products to consumers living in 150 different countries every year under the brands ELECTROLUX and AEG as well as under other brands as is the market leader in many of the product categories in which it does business. Its products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under the trademarks ELECTROLUX, AEG, AEG-ELECTROLUX and others including Zanussi, Eureka and Frigidaire. In 2013, Electrolux had sales of SEK 109 billion and 60,800 employees. By virtue of its extensive and long use of its marks and extensive advertising, it contends that the trademarks ELECTROLUX and AEG have acquired the status of well-known trademarks.
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The disputed domain name currently resolves to a website in Turkish offering repair services of Electrolux and AEG products. The Electrolux and AEG logotypes are displayed on the website, which creates a false impression that there is a connection between the Respondent and the Complainant. However, the Respondent has not been authorized by the Complainant to use the ELECTROLUX and AEG trademarks or to provide such services. The Complainant has its own repair services and the Respondent is not a part of those services.
The fact that the Respondent operates the site under the disputed domain name is insufficient to establish a legitimate interest since the Respondent began using it after having registered the disputed domain name and long after rights had been established by the Complainant in the ELECTROLUX and AEG trademarks.
The Complainant further contends that the disputed domain name is not being used in connection with a bona fide offering of goods and services. It asserts that the Respondent cannot claim to have any rights or legitimate interests in the disputed domain names as a reseller or repair service for any of the Complainant’s products. The Respondent has not stated any legal and business relation to the Complainant and failed to prevent any confusing similarity from arising with official and authorized services provided by the Complainant. The Complainant further contends that the Respondent’s use of the website does not qualify as a bona fide offering of goods or services according to the tests laid down in Oki Data Americas, INC. v. ASD, Inc.,WIPO Case No. D2001-0903. The content of the website confuses Internet users as to the Respondent's relationship with the Complainant and there is no disclaimer to dispel the confusion created that the Respondent is authorized by the Complainant to provide repair or other services, which is not the case.
The Complainant contends that the disputed domain name was registered and is being used in bad faith since the Respondent must have been aware of the Complainant's mark at the time of registration but registered and used the disputed domain name to attract users to its commercial site by creating the impression that it is affiliated to or endorsed by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Having regard to the evidence provided by the Complainant as to its trademark registrations around the world, the long and extensive use of its trademarks on its goods and its widespread reputation, the Panel has no hesitation in finding that the Complainant has rights in the marks, ELECTROLUX and AEG.
The Panel finds that the threshold test for confusing similarity under the UDRP involves a comparison between the trademarks and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name.
The disputed domain name is not identical with the ELECTROLUX and AEG trademarks, but incorporates both the marks in a string. This makes the disputed domain name confusingly similar to both these individual trademarks. When trademarks belonging to the same owner are used in combination in a disputed domain name, such use not only causes confusion but exacerbates it.
In this Panel’s assessment, the threshold test is satisfied. The similarity between the disputed domain name and the Complainant’s trademarks is clear and obvious.
Further, the addition of the gTLD “.com”, is insufficient to escape a finding of substantial or confusing similarity, as it is a technical requirement of registration: see, inter alia, CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith,WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar,WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures,WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015.
This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and 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, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has contended that the Respondent registered the disputed domain name long after the Complainant established its rights in its marks, that the Respondent has not been granted any license or other rights to use the Complainant’s marks for any purposes and that the Complainant is in no way associated or affiliated with the Respondent. Further, the Respondent has not been making a legitimate noncommercial or fair use of the disputed domain name. While the Respondent has used the site to which the disputed domain name resolves to advertise its repair services of Electrolux and AEG products, the Complainant asserts that the Respondent has not been authorized by the Complainant to provide such services or to use the ELECTROLUX and AEG trademarks for any purposes. The Complainant has its own repair services and the Respondent’s activities form no part of those services.
The Complainant has relied on Oki Data Americas, INC. v. ASD, Inc.,WIPO Case No. D2001-0903, to contend that the Respondent’s use of its website does not qualify as a bona fide offering of goods or services.
In that case, the panel found, inter alia, that it would not be a bona fide offering if the site did not accurately disclose the registrant's relationship with the trademark owner. A respondent should not, for example, suggest that it is the trademark owner, or that the website is an official site, if, in fact, it was not the case, or if it were only one of many sales agents.
In this case, the Electrolux and AEG marks are displayed on the website. There is no disclaimer that states that the Respondent is not authorized by the Complainant to provide repair or other services. This Panel accepts that the website’s content gives the false impression that there is a connection or relationship between the Respondent and the Complainant.
The Panel accepts that the Respondent’s use of its website does not qualify as a bona fide offering of goods or services. See also, for example, Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website). There is no evidence that the Respondent has any rights in any registered trademark corresponding in whole or in part to the disputed domain name or that the Respondent has been authorized or licensed by the Complainant to use its trademarks or to register and use the disputed domain name.
The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name.
The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The disputed domain name resolves to a website offering services on Electrolux and AEG products. On the evidence however, the Respondent has no license or other authorization to use the Complainant’s trademark or to offer such services. There is little doubt that the Respondent knew or must have known about the Complainant’s mark and business when registering the disputed domain name, given the widespread fame and reputation of the Complainant’s trademarks in its business activities and the deliberate choice of the disputed domain name which incorporates the Complainant’s well-known trademarks.
The Complainant argues that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the websites.
This Panel accepts the Complainant’s assertions that by its misleading use of the website and the disputed domain name, the Respondent was attempting to attract and divert consumers to its website for its own commercial gain by creating the aforesaid likelihood of confusion.
Having regard to all the circumstances of the case, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that the Respondent’s registration and use of the disputed domain name was in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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.
Richard Tan
Sole Panelist
Date: June 9, 2014
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