The Complainant is AB Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Begad Negad of Cairo, Egypt. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2014. On November 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 1, 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.
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 December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2014.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 15, 2015. 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 facts relevant to the findings and decision in this case are that:
1. the Complainant is a Swedish joint stock company which sells electrical appliances by reference to the registered trade mark ELECTROLUX;
2. the trade mark is the subject of, inter alia, Egyptian trade mark registration number 11490, registered since June 7, 1948;
3. the disputed domain names were registered in April and August of 2014;
4. the disputed domain names resolve to websites which include, amongst others, the Complainant’s trade mark, and which offer spare parts, repair services and technical support for domestic electrical appliances of the kind made by the Complainant;
5. there has been no commercial or other relationship between the parties and the Complainant has authorized the Respondent to use its trademark or register any domain name incorporating its trade mark; and
6. pre-Complaint cease and desist letters from the Complainant’s representative to the Respondent went unanswered. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in ELECTROLUX and alleges that the disputed domain names are confusingly similar to its trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact Respondent failed to submit a Response. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the domain name is identical or confusingly similar to the trade mark.
For the purposes of paragraph 4(a)(i) of the Policy, it is accepted that a trade mark registered with a national authority is evidence of trade mark rights1 . The Panel therefore accepts that the Complainant has trade mark rights in ELECTROLUX by reason of its national registrations in Egypt and elsewhere.
The Panel finds the disputed domain names to be confusingly similar to the trade mark. The disputed domain names takes the whole of the trade mark and merely add nondistinctive material in the form of the generic Top-Level Domain, “.com”,2 and either the term “egy” or “-egy”. The Panel accepts the Complainant’s submission that the letters “egy” would be perceived by relevant Internet users as a form of shorthand for the country, Egypt. The Panel finds in any event that the addition of either “egy” or “-egy” to the trade mark is de minimus and if Internet users failed to attach any meaning to the letters, the trade mark would still remain the dominant and recognizable part of the domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to both disputed domain names. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests 3.
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs database does not support any conclusion that the Respondent might be commonly known by either of the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not. There is no evidence that the respondent has permission to use the trade mark and the Complainant expressly states that it has not authorized the Respondent to use the trade mark.
The disputed domain names resolve to (commercial) websites which use the Complainant’s (logostyle) trade mark and so make a false suggestion of an association or affiliation with the Complainant. While the Panel notes that the Respondent appears to be selling the Complainant’s products, there is no disclaimer disclosing the relationship between the Respondent and the Complainant. In the result, there is no evidence of use of the disputed domain names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy with respect to both disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy above. The Panel has already found the disputed domain names to be confusingly similar to the Complainant’s trade mark. The Panel accepts as more likely than not to be true that the Respondent receives or received revenue from the websites associated with the disputed domain names. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that the Respondent is using the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel finds that the Respondent registered and is using the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy in respect of both disputed domain names. 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 names, and be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: January 28, 2015
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a Top-Level Domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because Top-Level Domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
Full & Egal Universal Law Academy