The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Ramin Derakhshan of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2014. On December 30, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 31, 2014, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on January 7, 2015. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 21, 2015.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 January 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 16, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 20, 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 is a joint stock company registered in Sweden. It is a supplier of home appliances and related products worldwide, under brands including Electrolux, AEG, Zanussi and others.
The Complainant is the owner of numerous registrations for the trademark AEG in territories throughout the world. The registrations include, for example:
- Community Trade Mark number 0005967 for AEG filed on April 1, 1996 in International Classes 07, 09, 11, 12, 37 and 42;
- United States trademark number 3008151 for AEG filed on June 18, 2002 in International Classes 07 and 11;
- Islamic Republic of Iran trademark number 7944 for AEG which (the Complainant states) is currently active with a renewal date of October 30, 2020.
The date of registration of the disputed domain name is unclear and is not stated on the relevant WhoIs search report. While the Complainant states that the disputed domain name appears to have been registered on February 16, 2014, IRNIC states that the registration date was May 20, 2012.
The Complainant produces evidence by way of screen prints that, as at December 17, 2014, the disputed domain name was connected to a website at “www.”, principally in Persian, which appeared to offer home appliances for sale which emanated from both the Complainant and the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a global leader in the supply of home appliances and related products, which are sold under various trademarks including AEG. It sells more than 50 million products to customers in over 150 countries every year and had over 60,000 employees in 2013, in which year its sales totaled 109 billion Swedish Krona (SEK).
The Complainant states that the mark AEG represents the company “Allgemeine Elektricitats Gesellschaft” which has traded under that name since 1887. It produces evidence of numerous trademark registrations for AEG throughout the world, including the registrations referred to above, and states that its registrations long predate the registration of the disputed domain name. It asserts that, owing to the enormous sums expended on advertising and related activities under the mark AEG, the mark has gained the status of a well-known trademark for the purposes of the Trade-Related Aspects of Intellectual Property Rights Agreement (the “TRIPS Agreement”).
The Complainant submits that the disputed domain name is confusingly similar to its trademark AEG. The Complainant points out that the disputed Domain Name comprises its mark AEG linked by a hyphen to the term “Bosch” which is the trademark of one of the Complainant’s competitors. The Complainant submits that the addition of the term (“Bosch”) does nothing to dispel any risk of confusion between the Complainant’s mark AEG and the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has no business relationship with the Respondent and has never authorized the Respondent to use its mark AEG, and that the Respondent has no independent trademark rights in, or other business connection with, the mark AEG. In addition, the Complainant denies that the Respondent has any rights to use the mark AEG as a reseller of the Complainant’s products because the Complainant is using the mark AEG to sell competing goods, including those of Bosch, as well as the Complainant’s and the Respondent fails to make clear the nature of its relationship (or lack thereof) with the Complainant (Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903).
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that, in view of the fame and worldwide reputation of the Complainant’s well-known trademark AEG, the Respondent must have had knowledge of the Complainant’s mark when it registered the disputed domain name. Furthermore, that knowledge is obvious from the fact that the Respondent has used the Complainant’s mark AEG for a website offering the Complainant’s products for sale, in addition to those of the Complainant’s competitors. The Complainant’s points out that the Respondent’s website featured the trademarks and logos of both the Complainant and its competitor Bosch and submits that this connection is liable to cause dilution of the Complainant’s trademark.
The Complainant produces correspondence with the Respondent in which the Respondent asserts that the registration of the disputed domain name was lawful according to the laws of the Islamic Republic of Iran, invites the Complainant to purchase the disputed domain name, and states that its website “is just describing the products and there’s no intention of selling anything.” The Complainant states that this is untrue, as the screen shots of the website in question include a “shopping cart” link.
The Complainant states that the Respondent is doing no more than “sponging off” the Complainant’s world-famous trademark and goodwill for its own commercial gain, including the sale of the Complainant’s competitors’ products. In particular, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Complainant seeks the cancellation of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 or is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of longstanding registrations for the trademark AEG in numerous territories throughout the world. Ignoring the country code Top-Level Domain (“ccTLD”) for the Islamic Republic of Iran “.ir”, the disputed domain name comprises the Complainant’s mark AEG separated by a hyphen from the term “Bosch”, which the Panel accepts is the trademark of one of the Complainant’s well-known competitors. The Panel finds that there is nothing in the addition of the term “Bosch” to distinguish the disputed domain name from the Complainant’s trademark and that, on the contrary, the adoption of the trademarks of two well-known appliance manufactures suggests a connection with each of those entities.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
By the submissions included in the Complaint as set out above, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While it was open to the Respondent to file a Response in these proceedings, it has failed do so and there is no evidence before the Panel of any such rights or legitimate interests on the Respondent’s part. In particular, the Panel finds nothing in the Respondent’s previous communications with the Complainant that would tend to establish any such rights or legitimate interests in the disputed domain name. The Panel is not of the view that the circumstances in which a reseller of goods may legitimately make use of a trademark for the purpose of a domain name have been established in this case. It is essential in such cases that the registrant is selling only the trademark owner’s goods and in this case the disputed domain name combines the Complainant’s trademark with that of a competitor and, on the Complainant’s submitted evidence, the Respondent has offered the competitor’s goods in addition to those of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered or Used in Bad Faith
The Panel readily infers from the Respondent’s use of the disputed domain name, as described above, that it was aware of the Complainant’s trademark AEG at the date of registration of the disputed domain name and that it registered the name with the intention of referring to the Complainant and its products and attracting Internet users to its website by virtue of that reference. The Respondent has not been authorized to use the Complainant’s trademark and, by combining that mark with the mark BOSCH and offering both suppliers’ products, the Respondent has failed to use the Complainant’s mark in a manner that could be regarded as bona fide under the terms of the Policy.
Accordingly, the Panel finds that the Respondent is taking unfair advantage of the Complainant’s well-known trademark and that, in particular, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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 cancelled.
Steven A. Maier
Sole Panelist
Date: March 4, 2015
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