The Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden
The Respondent is Name Servis, Александр Шевчук, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2020 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 May 7, 2020 in this regard. On May 6, 2020, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On May 7, 2020, the Complainant submitted its request that English be the language of the proceeding. On May 7, 2020 and May 20, 2020,the Respondent sent various email communications to the Center. The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraph 4(c), the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on May 22, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was June 11, 2020. The Respondent did not submit a formal response. Accordingly, on June 16, 2020, the Center informed the Parties that it would proceed to appoint a Panel. The Center appointed Ganna Prokhorova as the sole panelist in this matter on June 17, 2020. 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant is AB Electrolux, a Swedish joint stock company founded in 1901 and a producer of appliances and equipment for kitchen and cleaning products and floor care products. In 2018, AB Electrolux had sales of SEK 124 billion and about 55,000 employees. The Complainant holds worldwide trademark registrations for AEG, including in Ukraine, such as the International Trademark Registration No. 508107 registered on November 28, 1986, in particular, for services in class37 ICGS “repair, servicing and maintenance of electro technical products, of mechanical construction products and of heating, air-conditioning, refrigerating and ventilating installations”. International Trademark No. 802025 for AEG (word mark) was registered on December 18, 2002 in classes 7, 8, 9, 10, 11 and 17. The Complainant operates websites for or containing the AEG trademark including “www.aeg.com” and the local website “www.aeg.ua”. The Complainant uses these domain names to connect to a website through which it informs potential customers about its AEG mark and its products and services. The Respondent is a Ukrainian individual. According to the WhoIs, the disputed domain name was registered on April 4, 2020. On the day of this decision the website under the disputed domain name is currently inactive. However, based on the take down report provided by the Complainant when the website was active, it looked as it offered repair of household appliances and was marked as “AEG service”. 5. Parties’ Contentions A. Complainant The Complainant’s trademarks acquired protection significantly prior to registration of the disputed domain name. The Complainant operates numerous websites for or containing the AEG trademark including “www.aeg.com”and the local website “www.aeg.ua”. The Complainant uses these domain names to connect to a website through which it informs potential customers about its AEG mark and its products and services. The disputed domain name is confusingly similar to the Complainant’s AEG Marks. The country code Top-Level Domain (ccTLD) “.com.ua” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar. The Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent is not preparing to use it in connection with a bona fide offering of goods and services. The Respondent has connected the disputed domain name to a website which has the look and feel of an official AEG website and the intention of the registration of the disputed domain name is to take advantage of the well-known AEG trademark. The Respondent was aware of the Complainant’s mark prior to the acquisition of the disputed domain name and the establishment of Respondent’s website. The Respondent has never been granted permission to register the disputed domain name. The Respondent takes advantage of the AEG trademark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or a product or service on Respondent’s website or location. The Complainant tried to contact the Respondent through a cease and desist letter advising that the unauthorized use of its trademarks violated the Complainant’s trademark rights and requesting a voluntary transfer of the disputed domain name.. However, no reply was received. The Complainant seeks a transfer of the disputed domain name to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions but submitted several email communications one of which expressed willingness to transfer the disputed domain name to the Complainant. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement for the disputed domain name is Ukrainian. The Complainant has filed the Complaint in English and requested English to be the language of this proceeding based on the Respondent’s registration of a domain name including an English-language trademark. The Respondent has not provided any arguments or supporting materials as to why the proceedings should not be conducted in English. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. The Panel notes that the disputed domain name is composed of Latin characters and contain a dictionary term, “service”, whereas the word “aeg” has no literature meaning in Ukrainian language. Whilst there is a language requirement in paragraph 11(a) of the .UA Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Michael Kors (Switzerland) International GmbH. v. Minakova Maria, WIPO Case No. DUA2020-0002; Chewy Inc. v. Rostislav Karyi/Ростислав Карый ,WIPO Case No. DUA2020-0007). The Panel is proficient in both Ukrainian and English. The Panel noted that the Respondent did not provide any arguments or supporting materials as to why the proceedings should not be conducted in English. The Panel also notes that the Center has sent all of its email communications to the Parties in both languages English and Ukrainian. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complainant is ordered to translate its filing. Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. 6.2. Substantive Issues In accordance with paragraph 4(a) of the .UA Policy, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights; (ii) that the Respondent has no rights or 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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions (Google LLC v. Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009). However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. As evidenced in the Complaint, the Complainant is the owner of several trademarks AEG which enjoy a widespread reputation and predate the registration of the disputed domain name. Therefore, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. The Panel also considers that the disputed domain name The addition of the dictionary term “service” does not prevent a finding of confusing similarity between the Complainant’s trademarks and the disputed domain name.. Although it is unnecessary to go further, the word “service” is related or directed to the very subject matter covered by the Complainant’s registered trademark. In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the .UA Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the .UA Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While the overall burden of proof in the proceedings is on the complainant, proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Therefore, the Panel notes the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the .UA Policy. (See LEGO Juris A/S v. Anton Obrezkov,WIPO Case No. DUA2020-0001). The disputed domain name was registered by the Respondent well after the Complainant had registered the AEG trademarks and had established extensive goodwill from its use. The Respondent has made no claims to neither having any relevant prior rights of its own, or to having become commonly known by the disputed domain name. According to the Registrar’s information, “Александр Шевчук” is the registrant of the disputed domain name. The Panel takes into account that the word “aeg” does not have any meaning in Ukrainian or Russian languages. Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the .UA Policy (see also AB Electrolux v. Evgenii Zaharov /Захаров Евгений,WIPO Case No. DUA2020-0006). The Panel finds that the disputed domain name is currently not resolving to an active website, however, based on the evidence provided by the Complainant,, when the website was active, it looked as it offered repair of household appliances and was marked as “AEG service”, creating a risk of confusion with the Complainant. The Panel notes that the website, when it was active, did not disclose the relationship (or lack thereof) between the Complainant and the Respondent. When the website was active the Respondent offered services, stating “PROFESSIONAL REPAIR OF HOUSEHOLD APPLIANCES AEG IN KIEV” on the website. The Respondent’s layout included a stylized AEG logo prominently on the top left of the website, and thus creating a risk of confusion with the Complainant. The Respondent has been granted several opportunities to present some compelling arguments that it has rights in the disputed domain name but has failed to do so. This behaviour coupled with the use of the disputed domain name cannot be considered as legitimate use of the disputed domain name. Under such circumstances, the Panel concludes that the Respondent is not and was not involved in a bona fide offering of goods or services under paragraph 4(c)(i) of the .UA Policy. In addition, based on the evidence provided by the Complainant, the Panel infers that the Respondent aimed to monetize the disputed domain name by offering services under AEG trademark on the website, and/or claiming affiliation with the Complainant when it was active, and the Panel finds that the Respondent activities does not fall under a legitimate noncommercial use under paragraph 4(c)(iii) of the .UA Policy. Absent a showing to the contrary by the Respondent, the Complainant has therefore established that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the second element of the .UA Policy under paragraph 4(a)(ii). C. Registered or Used in Bad Faith According to paragraph 4(a)(ii) of the .UA Policy it should be established that the disputed domain name has been registered or is being used in bad faith. The Panel finds that the Complainant’s rights in the AEG marks are so well established, and its AEG trademark has achieved a level of global recognition and fame such that the Respondent has no colorable argument that he is unaware of the AEG trademark. Accordingly, finding actual knowledge of the Complainant’s mark in light of its fame and the use of the disputed domain name evidences bad faith registration and use (Chewy Inc. v. Rostislav Karyi/Ростислав Карый,WIPO Case No. DUA2020-0007). The Panel agrees that the Respondent’s registration and use of the disputed domain name constitutes bad faith under paragraph 4(b)(iv) of the .UA Policy, since the Respondent has never been granted permission to register the disputed domain name, however, takes advantage of the AEG trademark by intentionally attempting to attract Internet users to the Respondent’s website 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 a product or service on the Respondent’s website or location. This is not the case, and the Internet user’s confusion is further strengthened by the fact that there are services for AEG products advertised on the Respondent’s website without any disclaimer of association with the Respondent. The Panel has moreover found the following types of evidence to support a finding that the Respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) absence of any conceivable good faith use. There is no evidence of any other conceivable good faith use. The Panel finds that the above facts is clear evidence of bad faith under paragraph 4(b)(iv) of the .UA Policy. Furthermore, the Panel notes that the Complainant tried to contact the Respondent through a cease-and-desist but the Respondent did not respond and did not explain nor justify use of the Complainant’s trademarks in the disputed domain name. Failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of the disputed domain name. (see Facebook Inc. v. Private Registration / Denis Khakimov, WIPO Case No. DUA2019-0002). The Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Ganna Prokhorova
Sole Panelist
Date: July 05, 2020
Full & Egal Universal Law Academy