The Complainant is AB Electrolux of Stockholm, Sweden, represented SILKA Law AB, Sweden.
The Respondent is Vahab Hashemi Gavgani of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2017. On February 8, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On February 12, 2017, 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 14, 2017.
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 17, 2017. In response to an email communication from the Respondent of February 20, 2017, the Complainant requested a suspension of the administrative proceedings for 30 days in order to explore settlement possibilities. The administrative proceeding was suspended on February 24, 2017. On March 22, 2017, the Complainant requested an extension to the suspension. On the same date, the proceeding was further suspended until April 5, 2017. On April 3, 2017 the Complainant requested reinstitution of the proceeding. On April 3, 2017, the proceeding was reinstituted.
In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on April 22, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 17, 2017. 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 joint stock company founded in 1901 that produces, amongst other things, kitchen appliances and equipment and cleaning and floor care products.
The Complainant is owner of numerous trademark registrations, including international trademark registration 802025, for the acronym “AEG” (the “AEG Mark”) registered in 2002 and designating the Islamic Republic of Iran, the location of the Respondent. The Complainant is also the owner of numerous domain names that correspond to the AEG Mark, including .
The Domain Name was created on May, 19, 2016. It currently resolves to an Internet site (“Respondent’s Website”) that displays the letters AEG in prominent form on a page featuring various electrical products that display the AEG Mark. The Respondent’s Website states that it is an industrial electronic store that offers equipment from various European brands including AEG. It also describes itself as an “AEG electronic store”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s AEG Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or is being used in bad faith.
The Complainant is the owner of the AEG Mark having registered the AEG Mark throughout the world (including the Islamic Republic of Iran, the location of the Respondent).
The Domain Name consists of the AEG Mark in its entirety with the addition of the word “electric” and the addition of the country code Top-Level Domain “.ir”. The addition of the suffix “electric” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name “aeg”, which is instantly recognizable as the world-famous AEG Mark. The Domain Name is thus confusingly similar to the Complainant’s AEG Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name for a website that offers for sale electrical equipment that may or may not be from the Complainant either without the permission of the Complainant or in breach of any distribution agreement it may have entered into. The use of a domain name in this manner does not constitute a bona fide offering of goods or services. This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with the Complainant in mind, given the fame of the AEG Mark and the use of the Domain Name. The Complainant contends that the Respondent used the Domain Name to capitalize on the fame and goodwill of the AEG Mark by creating confusion with the Complainant’s AEG Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not provide a formal response. Following the commencement of the proceedings an email from the Respondent was received by the Center, with the following relevant provisions reproduced in their entirety:
“I have received some materials relating to your claim about AEG. I am the web designer of the website mounted on this domain and my customer is distributor of AEG products.
Hereby I would like to know your suggestions about this domain,
Would you consider any payment to transfer this domain?”
The Respondent produced no documentation to suggest it was a developer or information as to the identity of the “client” including whether the “client” was a distributor of the Complainant’s products. The Parties then commenced settlement communications which did not result in the resolution of the proceedings. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the AEG Mark, having registrations for the AEG Mark as a trademark in the Islamic Republic of Iran and various countries around the world.
The Domain Name consists of the AEG Mark with the addition of the word “electric” which, as a description of the products sold by the Complainant, does not prevent a finding of confusing similarity and the country code Top-Level Domain “.ir”. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country code Top-Level Domain (“ccTLD”) “.ir” may be disregarded (see Compagnie Générale des Etablissements Michelin v. Saeed Karimi,WIPO Case No. DIR2011-0001 and Kaspersky Lab Zao v. BaniSaz Co.,WIPO Case No. DIR2010-0004).
The Panel adopts the reasoning in the cases above. The Domain Name is confusingly similar to the Complainant’s AEG Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the AEG Mark or a mark similar to the AEG Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent uses the Domain Name to operate a website to sell electrical products which are branded with the AEG Mark.
If the products sold by the Respondent via the Respondent’s Website are not genuine AEG products, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s AEG Mark for a site selling electrical products in direct competition with the Complainant or to mislead customers into thinking that the products sold have a connection with the Complainant.
If the Respondent is offering genuine AEG products from the Respondent’s Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of Uniform Domain Name Dispute Resolution Policy (“UDRP”) decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the sites accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent’s Website does not appear to accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, the prominent display of the AEG Mark and the description of the Respondent as an “AEG electronic store” provide the impression that the Respondent’s Website is either an official website of the Complainant or a website of a franchisee or licensed distributor of the Complainant.
Members of the public who are interested in the Complainant’s products have visited or may visit the Respondent’s Website on the assumption that the Respondent is the Complainant itself or an authorized franchisee. This is not the case. In the event that the Respondent is reselling genuine AEG products, its use of its website in its present form does not, on the face of it, grant it rights or legitimate interests in the Domain Name.
The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of its 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 its 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. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the AEG Mark at the time the Domain Name was registered. The Domain Name resolves to a website selling electrical equipment branded with the AEG Mark. The Respondent’s Website also contains a direct reference to the Complainant and describes itself as an “AEG electronic store”.
In the circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent is using or has used the Domain Name for the purposes of operating a website and advertising a related store that sells goods that compete with/are similar to the Complainant’s products. The Respondent is using the Domain Name, which is confusingly similar to the AEG Mark, to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Furthermore, the Respondent’s Website fails to disclose the relationship or lack thereof between the Respondent and the Complainant. Such use, in the absence of any explanation by the Respondent, is prima facie misleading and creates a likelihood of confusion with the Complainant. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s AEG Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: May 26, 2017
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