The Complainant is AB Electrolux of Stockholm, Sweden, represented SILKA Law AB, Sweden.
The Respondent is Reza Nazari Talkhabi 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 February 1, 2016. On February 2, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 3, 2016, 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 February 22, 2016.
The Center verified that the 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 February 23, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2016. On February 24, 2016, the Respondent filed an email communication with the Center, indicating that it was willing to transfer the disputed domain name to the Complainant. On February 24, 2016, the Complainant filed a suspension request and the proceeding was suspended on February 29, 2016. At the request of the Complainant, the proceeding was reinstituted on April 14, 2016. After reinstitution, the due date for Response was extended through April 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on May 3, 2016.
The Center appointed a sole panelist in this matter on May 24, 2016. However, on June 5, 2016, it became necessary for the sole panelist to recuse itself. On June 6, 2016 the Center notified the parties that an alternate panelist would shortly be appointed.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 13, 2016. 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
According to the Complaint, the Complainant, or the business it conducts, was established in 1901. The Certificate of Registration included in the Complaint states that the Complainant itself was incorporated in 1910. It is one of the world’s largest producers of appliances and equipment for kitchen and cleaning products and floor care products.
“AEG” was established in Germany in 1887 and has been designing, manufacturing and supplying electrical engineering consumer products since that date. It claims to have been one of the first companies to have engaged an industrial designer to help create its products in the early 20th century and has promoted itself under the tag-line “Perfekt in Form und Funktion”.
At some point (which is not clear from the Complaint), it appears that AEG became part of the Complainant’s group of companies. Now, the Complainant is the owner of many trademarks registered around the world for AEG. These include, in particular, International Trademark No. 802 025, AEG, for a wide range of goods in International Classes 7, 8, 9, 10, 11 and 17. International Trademark No. 802 025 was registered on December 18, 2002, claiming priority from a trademark registered in Germany on December 3, 2002. One of the countries designated under the Madrid Protocol for International Trademark No. 802 025 is the Islamic Republic of Iran.
The disputed domain name was registered on April 1, 2014. It resolves to a website which, according to the Complaint based on Google Translator, offers vacuum cleaner repair services. The products displayed on the print out of the web page included in the Complaint, however, appear to be AEG brand dishwashers.
The Respondent had also registered the domain names:
- ;
- ; and
- .
The registration of these domain names was the subject of an administrative proceeding, AB Electrolux v. Reza Nazari Talkhabi,WIPO Case No. D2015-1369. That proceeding was terminated when the parties entered into a settlement agreement by which the Respondent agreed to transfer the domain names to the Complainant. According to the Complaint, that transfer was completed on August 21, 2015.
Following the filing and service of the Complaint, on February 24, 2016 the Respondent emailed the Complainant and the Center stating:
“I’ve read your email and attachments so i ready to cooperate with you.”
Although there has been an extensive round of communications between the Center, IRNIC, the Respondent and the Complainant, the transfer apparently mooted by the email has not been completed. The reasons for that are not entirely clear. In any event, it is necessary to proceed to a decision on the Complaint. 5. Discussion and Findings
No formal response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by IRNIC) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent. This is confirmed by the numerous emails which have passed between both parties, the Center and IRNIC following the Respondent’s email dated February 24, 2016 referred to above.
When a respondent has defaulted, paragraph 5(e) and paragraph 14(a) of the Rules require the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Therefore, paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of International Trademark No. 802 025 for AEG referred to in section 4 above.
The disputed domain name differs from this trademark simply by the addition of the prefix “t-” and the addition of the country code Top Level Domain (“ccTLD”) “.ir”.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademark or trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the ccTLD component as a functional aspect of the domain name system: Avaya Inc. v. Seid Saeed Emad Eslami Oskuie,WIPO Case No. DIR2016-0003. In addition, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Neither party has provided the Panel with any submissions on the significance, if any, of “t-” when used in the way it is used in the disputed domain name. In these circumstances, the Panel considers that the acronym “AEG” is the predominant, distinctive component of the disputed domain name. Certainly, the Panel considers it highly likely that notional Internet users, aware of the Complainant’s trademark, would think there was some association or connection between the holder of the disputed domain name and the trademark owner. There is, in any event, a strong visual and aural resemblance between the disputed domain name and the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Dr. Alireza Fahimipour,WIPO Case No. DIR2006-0002 and Inter IKEA Systems BV (IISBV) v. Abbas Ghaffarian,WIPO Case No. DIR2016-0011.
In the present case, the Complainant’s trademark was registered in the Islamic Republic of Iran many years before the Respondent registered the disputed domain name. The disputed domain name is not derived from the Respondent’s name and there is no suggestion that the Respondent is commonly known as “AEG” or some name which would contract to that. The Complainant has also verified with its Middle Eastern agent that the Respondent is not an authorized service provider or otherwise known to it.
It is not clear from the Complaint whether or not the Respondent does in fact provide repair services. As noted above, the text on the website apparently translates into offering the provision of repair services for vacuum cleaners although the goods displayed on the website are dishwashers. Even assuming in the Respondent’s favor that he does in fact provide repair services of the Complainant’s AEG brand vacuum cleaners or other whitegoods products, the Complainant also says that there is nothing on the website which discloses that the Respondent is not an authorized repair services provider of the Complainant.
The Respondent does not dispute any of these matters. On the contrary, his email dated February 24, 2016 appears to accept them.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered or Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been registered or is used in bad faith by the Respondent. Unlike the position under the Uniform Domain Name Dispute Resolution Policy, it is necessary to prove only one condition or the other: see, e.g., MIP METRO Group lntellectual Property GmbH & Co. KG v. Masoud Ziaie Moayyed,WIPO Case No. DIR2007-0005 and Aktiebolaget Electrolux v. Ali Jabbari,WIPO Case No. DIR2014-0005.
Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, it is clear that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark. The Complainant’s trademark is very well-known and it has been recognized as such in disputes involving domain names registered in the “.ir” ccTLD. A recent example is Aktiebolaget Electrolux v. Mohammad Aghakhani,WIPO Case No. DIR2014-0008. As discussed in section 5B above, the disputed domain name is not derived from the Respondent’s own name or any name he is commonly known by. Further, the Respondent does not have, or claims, any rights or legitimate interests in the acronym AEG. The Respondent has also registered a number of domain names, including the disputed domain name, which are based on the Complainant’s trademark and the website which the Respondent put up at the URL comprised of the disputed domain name features the Complainant’s branded dishwashers and includes claims to provide repair services for the Complainant’s AEG vacuum cleaners.
Further, the Complainant points to a number of decisions in its favor in which panels have held that a failure to disclose clearly the true nature of the relationship between the respondent and the complainant is itself use of the domain name in bad faith. These decisions include AB Electrolux v. Samet Bal and Firat Parto,WIPO Case No. D2011-2283; AB Electrolux v. Domain Admin / Sahin Sengor,WIPO Case No. D2015-1411; AB Electrolux v. Far Kalaye Pars Co.,WIPO Case No. DIR2015-0002.
In these circumstances, the use being made by the Respondent of the disputed domain name is not use in good faith under the Policy. It is use intending to take advantage of the trademark significance of the acronym “AEG” without any appropriate justification under the Policy.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy. 6. 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.
Warwick A Rothnie
Sole Panelist
Date: June 27, 2016
Full & Egal Universal Law Academy