The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Admin, of Istanbul, Turkey / Emrecan ARSLAN of Istanbul, Turkey. 2. The Domain Names and Registrars
The disputed domain names and are registered with FBS Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 25, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2015 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 March 3, 2015. On March 3, 2015, the Complainant requested English to be the language of proceeding. The Respondent did not comment on that request.
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 March 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2015.
The Center appointed Selma Ünlü as the sole panelist in this matter on April 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 Complainant in this administrative proceeding, Aktiebolaget Electrolux, was founded in 1901 and registered as a company in 1919 in Sweden, and it produces white goods such as refrigerators, dishwashers, washing machines, vacuum cleaners stoves etc. The Complainant conducts business in various countries.
The Complainant owns the registered trademarks ELECTROLUX and AEG as word and figure trademarks in several classes in all over the world (approximately 150 countries), as well as in Turkey.
As the Panel examined the registrations of the Complainant on the date of April 28, 2015, it has been noted that the Complainant has several trademark registrations before the Turkish Patent Institute ("TPI") containing the ELECTROLUX trademark. However, as far as the online database of TPI shows, AEG trademarks are recorded in the name of Electrolux Deutschland GmbH. On the other hand, the Panel noted that the Complainant holds several international registrations and Community Trademark (CTM) registrations for the AEG trademark.
The Complainant's ELECTROLUX and AEG trademarks are well-known trademarks as proved by ANNEX 10-1, 10-2, 10-3 of the Complaint. According to the online system of TPI, AEG trademark of Electrolux Deutschland GmbH has been recorded as a well known trademark as well.
The Complainant has registered numerous domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the terms "electrolux" and "aeg". The registration date of these domain names shows that these were held long before the registration of the disputed domain names which were created on August 28, 2014 according to WhoIs records.
When the Panel visited the websites under the disputed domain names on April 19, 2015, it is seen that the disputed domain names are still active. As it is seen from the websites, the Respondent provides maintenance service for all kind of white goods and electronic devices including the ones with ELECTROLUX and AEG brands. Also, the Panel noted that AEG and ELECTROLUX trademarks are used dominantly on the left up corner of the websites with these trademarks' specialized writing style. 5. Parties' Contentions A. Complainant
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to issue a decision that the disputed domain names be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
Identical or Confusingly Similar
The Complainant asserts that the disputed domain names comprise the words "electrolux" and "aeg" which are identical to its registered ELECTROLUX and AEG trademarks. The Complainant states that ELECTROLUX and AEG trademarks' well-known status have been confirmed in previous UDRP decisions as in AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777, Aktiebolaget Electrolux v. Agustin Acosta,WIPO Case No. D2010-1968 and Aktiebolaget Electrolux v. Mohammad Aghakhani,WIPO Case No. D2012-1920.
Moreover, the Complainant states that the addition of "plusservis" which means "plus service" in English language does not have an impact on the overall impression of the dominant part of the disputed domain names, ELECTROLUX and AEG.
The Complainant also iterated that consumers who would visit the disputed domain names would link the websites to the Complainant and this may result to associate the provided services to the Complainant.
The Complainant further asserts that the addition of ".com" does not have any impact on the assessment of confusing similarity between a trademark and a domain name.
As far as the use of the disputed domain names is concerned, the Complainant iterated that within the websites, the images of the Complainant's trademarks are being used by the Respondent who exploits their goodwill and this use may result in the dilution and other damage to the Complainant's trademarks. Rights or Legitimate Interests
The Complainant stated that no permission has been given to the Respondent to register its trademarks as a domain name. The Complainant states that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. The Complainant asserts that the Respondent does not have any registered trademarks or trade names that correspond to the disputed domain names, nor is the Respondent a licensee of the Complainant. Neither has the Complainant found anything that would suggest that the Respondent has been using ELECTROLUX and AEG in any other way that would give it any legitimate rights in the disputed domain names.
Moreover, the Complainant argues that the Respondent is in no way authorized to use the Complainant's ELECTROLUX and AEG trademarks in the disputed domain names, and that this is a factor in the finding of non-legitimate interest, as stated in Dr.Ing.h.c.F.Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
The Complainant further states that it has been successful in numerous UDRP cases in relation to unrelated websites that display the ELECTROLUX and AEG trademarks offering services and technical support for Electrolux and AEG products. The Complainant points out that in Aktiebolaget Electrolux v. Whois Privacy Protection Service, Inc. / Liderservis plus,WIPO Case No. D2013-1589 and Aktiebolaget Electrolux v. Cao Minh Tuy,WIPO Case No. D2014-1504 under similar circumstances, the panel concluded that such use could not be considered bona fide use.
Further, the Complainant submits that the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Complainant asserts that the Respondent does not disclose the non-existence of any relationship between the Respondent and the Complainant, nor are there any visible disclaimers that the website is not endorsed or sponsored by the Complainant in spite of using ELECTROLUX and AEG logos and trademarks. This causes the false impression that there is a connection between the Respondent and the Complainant despite a small notice at the bottom of the website translated to "All logos belong to the respective brands on our site. We provide special technical services related to the marks". The Complainant supports this claim by citing Inter IKEA Systems B.V. v. Domains By Proxy, LLC / mustafa Yildiz,WIPO Case No. D2013-1146, Aktiebolaget Electrolux v. Bui Trung Kiên,WIPO Case No. D2014-0951 and Aktiebolaget Electrolux v. Gurbulak As, zafer gurbulak,WIPO Case No. D2013-1934.
Further, the Complainant states that this use falls short of the "Oki Data Test" for another reason; resellers and service providers must use the site to sell only the trademarked goods as shown in Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774. However, the Respondent provides maintenance services in "all white goods maintenance" which presumably means that the Respondent is offering services for the Complainant's products as well as for other brands.
According to the Complainant, the fame of the Complainant's trademarks made the Respondent register the disputed domain names. The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Registered and Used in Bad Faith
The Complainant indicates that the disputed domain names have been registered and used in bad faith. The Complainant contends that the trademarks ELECTROLUX and AEG are well-known and reputed marks throughout the world.
The Complainant states that, given the nature of the websites to which the disputed domain names resolve, it is obvious that the Respondent was aware of the trademarks at the time of the registrations since on the websites the Complainant's logotypes have been used and there is a targeting of the Complainant's main industry.
The Complainant asserts that it tried to contact the Respondent on December 9, 2014 by a cease and desist letter sent by email to request a voluntary transfer of the disputed domain names. However, the Respondent did not reply to the Complainant's cease and desist letter.
The Complainant also iterates that the disputed domain names are registered for commercial gain to create a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service. The Complainant further contends that being aware of the Complainant's trademarks and creating confusion that the Respondent is an authorized dealer or repairer of the Complainant are indications of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
The disputed domain names' Registration Agreements are in Turkish and pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. However, the Complainant submitted arguments along with the Complaint as to why the proceedings should proceed in English. The purpose of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
Given the provided submissions and circumstances of this case, the Center has notified the Parties that it would proceed as follows:
1) Accept the Complaint as filed in English;
2) Accept a response filed in either Turkish or English;
3) Appoint a panel familiar with both languages mentioned above, if available.
The Center also notified the parties that the power to decide the language of the proceedings lay with the panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the parties both in English and Turkish.
The Respondent did not reply to the Complainant's request, therefore it did not express in any way that it cannot answer the allegations since it does not understand English.
The Complainant has submitted its Complaint and supporting evidence in English and, therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of administrative proceedings in this case.
At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989, Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679, and Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, and is of the opinion that both parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given the fact that the Center proceeded to issue its case-related communications to the Parties both in English and Turkish. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. 6.2. Substantive Elements of the Policy
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain names registered by the Respondent are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations of the ELECTROLUX and AEG trademarks.
Although the disputed domain names contain the Complainant's trademarks in its entirety, it is coupled with a generic word "plusservis", which means "plus service" in English. The Panel is of the opinion that the addition of the generic word "plusservis" does not negate the confusing similarity with the Complainant's trademark.
In similar cases (see, e.g. Sanofi-Aventis v. Gideon Kimbrell,WIPO Case No. D2010-1559; Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons,WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green,WIPO Case No. D2010-0024) the respective UDRP panels found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark.
Considering that the Complainant is conducting business on white goods, and repair and maintenance services of white goods are part of the Complainant's business, the addition of the subject terms to the disputed domain names is descriptive of the Complainant's services under the trademarks rather to be distinctive. See Swarovski Aktiengesellschaft v. Frank Jackie,WIPO Case No. D2013-0742. Therefore, the nature of the generic term used would tend to reinforce consumers' conclusion that the website to which the disputed domain names resolve are somehow legitimately included in the supply and service system established by the Complainant under its ELECTROLUX and AEG trademarks.
In a very similar case, Aktiebolaget Electrolux v. Agustin Acosta,WIPO Case No. D2010-1968, related to the same trademark, the panel indicated:
"In the present case, the Panel found that the addition of the suffix 'serviciotecnicomadrid' is not relevant in order to make the disputed domain name distinctive from the trademark and will not have any impact on the overall impression of the dominant part of the disputed domain name, ELECTROLUX, recognizable as a world famous trademark".
The Panel further finds that the addition of the gTLD ".com" is irrelevant when determining whether the disputed domain names are confusingly similar to the Complainant's trademarks (See, e.g. PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). It has been stated in several previous UDRP decisions that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941. The Panel recognizes the Complainant's rights and concludes that the disputed domain names are confusingly similar to the Complainant's ELECTROLUX and AEG trademarks.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, then the burden of production shifts to the Respondent to, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain names.
In the light of the evidence submitted in the case file, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the ELECTROLUX and AEG trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights in the ELECTROLUX and AEG trademarks and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the ELECTROLUX and AEG trademarks and the Respondent is not an authorized service for maintaining ELECTROLUX and AEG products.
The Panel is of the opinion that, without express authority of the relevant trademark holder, to be an authorized technical service of that trademark holder's products does not create any right to use a domain name that is identical, or otherwise wholly incorporates the relevant trademarks.
Consequently, in the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent has no authorization to use the ELECTROLUX and AEG trademarks in the disputed domain names.
The Panel also accepts that the Respondent is not commonly known by the disputed domain names, the Respondent has acquired no trademark or service mark rights, and the Respondent is not an authorized dealer or representative of the Complainant.
Moreover, as the Complainant points out, the Respondent would not meet the criteria laid down in Oki Data. This is based on the use of the websites at the disputed domain names to provide maintenance services not only for the Complainant's products but also presumably for other brands. Furthermore, the small notice at the bottom of the websites does not prominently or accurately disclose the Respondent's relationship with the Complainant.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain names, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademarks ELECTROLUX and AEG, as well as its extensive and intensive usage and evidence of the renown and reputation of the Complainant's trademarks (as also confirmed in previous UDRP decisions, for example AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777 and Aktiebolaget Electrolux v. Agustin Acosta,WIPO Case No. D2010-1968), the Respondent, who appears to be located in Turkey, was aware of the Complainant and its trademarks. See e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant's trademarks at the time of the registration of the disputed domain names is to be considered an inference of bad faith registration.
Further, the fact that the Respondent's website uses the Complainant's trademarks ELECTROLUX and AEG in connection with offering of services related to the Complainant's goods suggests that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites and other online location, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites.
Moreover, the Panel believes that the Respondent tried to avoid trademark infringement claims by including a disclaimer on the bottom of the webpages, translated as "All logo and brand names mentioned in our web site announcements are registered mark of the concerned company. We serve as private technical service of the related brands." However, it does not affect the Panel's finding that the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's trademarks. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0", paragraph 3.5).
The Panel further notes that:
(i) the Respondent did not offer any counter-argument and remained in default,
(ii) the Respondent has not provided any evidence of good faith use; instead, it has actively hidden its real name and contact details by a proxy registration service.
Although using privacy services as in this case is not accepted as a solely sign of bad faith, it is found in many cases that such usage may be in connection with bad faith. See, WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2,WIPO Case No. D2012-0033. Also, it is noteworthy to mention that even the UDRP panels who did not find the usage of privacy services as an indication of bad faith, they accepted that "privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere". See, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
Therefore, in light of the above-mentioned circumstances of the present case, the Panel is convinced that the disputed domain names have been registered and are being used in bad faith and that the Complainant has established the third element under paragraph 4(a) 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 names and be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Date: April 29, 2015
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