The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 20, 2019. 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 manufacturer of home and kitchen appliances.
The Complainant is the owner of numerous registrations for its well-known AEG mark and its variations, including:
- International registration of the AEG mark, No. 1338509 dated November 10, 2016, designated in the Russian Federation among other countries;
- International registration of the AEG, No. 508107B dated November 28, 1986, designated in the Russian Federation among other countries.
On August 9, 2018, the Complainant sent the Respondent a cease-and desist letter in English notifying the Respondent about the Complainant’s trademark rights in the AEG marks and about the Respondent’s infringement on those rights. Five days later the Complainant sent a follow-up email to the Respondent, but received no response.
The Respondent registered the Domain Name on May 28, 2018. The Domain Name directs to a website in the Russian language offering repair and maintenance services for AEG products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is a Swedish manufacturer of home and kitchen appliances. The Complainant alleges that the Domain Name is confusingly similar to its trademark AEG because the Domain Name incorporates the Complainant’s trademark in its entirety. In the Complainant’s view, neither the addition of generic term “eservice”, nor the addition of the generic Top-Level Domain (“gTLD”) “.com” has no impact and is irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant alleges that it has given no license or authorization to the Respondent to use the Complainant’s trademark. The Complainant asserts that the Respondent is not commonly known by the Domain Name. The Complainant argues that the Respondent is not making a fair use of the Domain Name as a service provider because the Respondent’s website associated with the Domain Name does not disclose lack of relationship between the Respondent and the Complainant. The Complainant contends that the Respondent’s use of the Complainant’s mark on the Respondent’s website suggests to Internet users that the Respondent acquired authorization to use the Complainant’s trademark. The Complainant claims that the Respondent’s failure to respond to the Complainant’s cease and desist letter confirms that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant asserts that the Domain Name was registered and is being used in bad faith. In the Complainant’s view, the Respondent was aware of the Complainant’s rights in the AEG trademark at the time of the Domain Name’s registration because the Complainant’s trademark registrations predate registrations of the Domain Name and the Complainant’s AEG trademark is well known. The Complainant argues that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating 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 services offered on the Respondent’s website and location. The Complainant contends that the Respondent is using the Domain Name, incorporating the Complainant’s well-known trademark, to direct to a website that displays the Complainant’s new AEG logo. The Complainant asserts that the Respondent’s website indicates that the Respondent is an approved provider or repair center of the Complainant’s products in Russia, which indicates that the Respondent is trying to trade on the goodwill of the Complainant’s trademark. The Complainant alleges that the Respondent’s failure to respond to the Complainant’s cease and desist letter is another indication of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the AEG trademark.
The Domain Name consists of the Complainant’s AEG trademark, a hyphen, the word “eservice” and the gTLD “.com”. “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”1 Because AEG trademark is recognizable within the Domain Name, the addition of the term “eservice” and a hyphen would not prevent a finding of confusing similarity under the first element.2 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 The Panel finds that the Domain Names are confusingly similar to the Complainant’s AEG trademark.
Thus, the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.4
The following circumstances, in particular, but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(iii):
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
First, the Complainant alleges, and the Respondent does not contradict, that the Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Names. The WhoIs information on file shows that the Respondent identified itself as Domain Admin, Whois Privacy Corp.
Second, the Respondent has not been using the Domain Names in connection with a bona fide offering of goods or services. The Complainant contends that it did not authorize the Respondent to use the Complainant’s AEG trademark.
Third, the Respondent’s use of the Domain Name is not fair, because “it falsely suggests affiliation with the trademark owner”.5 The nature of the Domain Name itself suggests affiliation between the Complainant and the Respondent because the Domain Name contains the word “eservice”. The Domain Name directs to a website that offer repair of AEG products in Moscow.
While prior UDRP panels recognized that unauthorized service providers might have legitimate interests in a domain name containing complainant’s trademark, their activities should comply with the following cumulative requirements (the “Oki Data Test”):
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”6
Here, the Respondent failed to comply with the Oki Data test. The evidence on file shows that the website connected to the Domain Name is used for service center of AEG equipment. The Respondent website’s design exacerbates a misleading impression of an affiliation between the Complainant and the Respondent. The evidence shows that the websites prominently display the Complainant’s AEG logo alongside the words in Russian that translate to English as “Service center AEG”. The website’s “Home” page also displays the words “ask AEG”. The Respondent’s website contains no disclosure of the Respondent’s relationship with the Complainant. Because the Respondent’s use of the Domain Name did not comply with the requirements of the Oki Data Test, its use of the Domain Name did not create rights or legitimate interests in the Domain Name.
The Panel, therefore, finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Name. Once a complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.7 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.8 Because the Respondent failed to rebut the Complainant’s prima facie case, the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Names in bad faith because it is inconceivable that the Respondent was not aware of the Complainant’s well-known AEG trademark at the time of the Domain Name’s registration. See, PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). The Respondent’s use of the Domain Name for websites prominently displaying the Complainant’s AEG logo in connection with repair services for the Complainant’s equipment supports this conclusion.
The Panel also finds that the Respondent is using the Domain Name in bad faith. The Respondent is trying to capitalize on the goodwill of the Complainant’s trademark by using the Domain Name to attract, for commercial gain, Internet users to the Respondent’s websites by creating likelihood of confusion with the Complainant’s marks as to the affiliation or endorsement of either the Respondent or its websites. The Respondent is profiting from the impression of affiliation with the Complainant.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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.
Olga Zalomiy
Sole Panelist
Date: March 25, 2019
1Section 1.7, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 2.1, WIPO Overview 3.0.
5 See section 2.5.1, WIPO Overview 3.0.
6 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903
7 Section 2.1, WIPO Overview 3.0.
8 Id.
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