Complainant is Aktiebolaget Electrolux (“Electrolux”), of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Gokhan Kazak, of Mersin, Turkey.
The disputed domain names <aegservisim.com>, <electroluxservisim.com>, and <frigidaireservisim.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On October 23, 2008, the registrar transmitted by email to the Center its verification response confirming that 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 the “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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 27, 2008.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on December 5, 2008. 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.
Complainant owns hundreds of trademark registrations in over a hundred countries for the mark ELECTROLUX and AEG. Complainant's related company Electrolux Home Products, Inc. is owner of numerous registered trademarks for the mark “FRIGIDAIRE.”
The disputed domain names were registered on April 28, 2008. The web pages to which the disputed domain names route do not display active content.1
Complainant avers that Electrolux, is a Swedish company founded in 1901. Claiming that it is the world's largest producer of appliances and equipment for kitchen, cleaning and outdoor use, Complainant also avers that Electrolux has leading market positions in white goods and floor-care products in both Europe and North America.
Complainant alleges that its ELECTROLUX, AEG and FRIGIDAIRE marks are well-known and that it has exclusive rights to use of the marks worldwide, in relation to any product or use whatsoever, based upon Article 6bis of the Paris Convention for the Protection of Intellectual Property as extended by TRIPS. Complainant also contends that it owns hundreds of domain name registrations which include the marks ELECTROLUX, AEG and FRIGIDAIRE.
Complainant alleges that the disputed domain names are confusingly similar to Complainant's marks; that the addition of “servisim” (a Turkish word meaning “service”) to its marks and the gTld suffixes in the disputed domain names are not “relevant and will not have any impression on the dominant part of the names.” Complainant contends that Respondent intentionally chose the disputed domain names based on its trademarks to generate traffic to Respondent's web sites and that Respondent is trying to “sponge off” of Complainant's “world famous” trademarks.
Complainant contends that Respondent registered the disputed domain names on April 28, 2008, after the vast majority of registrations for the Electrolux mark were completed.2 Complainant avers that Respondent has no connection with Complainant, and that Complainant has neither licensed, nor otherwise authorized the Respondent to use the trademarks. Complainant contends, therefore, that Respondent has no rights or legitimates interest and his use of the disputed domain names cannot create a legitimate interest or be considered as bona fide, citing, among other cases, Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 and Drexel University v. David Brouda, WIPO Case No. D2001-0067.
Contending that Respondent registered and is using the disputed domain names in bad faith, Complainant notes that its marks have the status of well-known trademarks throughout the world, therefore the value and goodwill associated with the marks could not have been unknown to Respondent.
Complainant avers that it first became aware of the Respondent's registration in September 2008. Complainant avers that it sent cease and desist letters on September 12, 2008 to the WHOIS listed contact for the registrant. Complainant, in its communications, advised Respondent that the use of its trademark ELECTROLUX was unauthorized and requested immediate transfer of the disputed domain names, offering compensation not to exceed out of pocket expenses of Respondent. Complainant sent a reminder by post and email on October 6, 2008, and received no response to any of the communications.
Complainant contends that the character of the websites strengthens its claim that Respondent was aware of Complainant's marks and registered in bad faith. Complainant states that the website at “www.electroservisim.com” constantly changes appearance; that the website “merely displayed” the Electrolux logo when Complainant first became aware of the site, it then developed to appear similar to an official Electrolux website but displayed white goods without the logo. At the time of filing the Complaint, it is averred, the site was “offline.” Complainant makes no description of the websites to which the other two disputed domain names route although Complainant states that there are “active” websites associated with those disputed domain names and provides an apparently undated single screen print of the website at “www.aegservisim.com” with no further detail. (Complaint, Annex 8).
Noting that Respondent has allegedly registered at least “three” domain names which include well-known trademarks without authorization (including the ones in this proceeding and the term “sonyservism” in another domain name), Complainant urges the Panel to find that Respondent has engaged in a pattern of registering domain names which include well-known marks without authorization.
Complainant cites the panel decision in Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010, for the proposition that a significant pattern by Respondent can be found under paragraph 4b(ii)of the Policy; however Complainant describes that case as holding only that the registration of two domain names in the same case is not generally sufficient to show a pattern. Complainant seeks to distinguish this case, since Respondent allegedly also registered a domain name which included well-known marks of another trademark owner. Complainant therefore concludes that the Panel should find bad faith.3
On the basis of the above, Complainant seeks transfer of the disputed domain names.
Respondent did not reply to Complainant's contentions.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a reply, the panel may also accept as true the factual allegations in the Complaint. (See ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain names <aegservisim.com>, <electroluxservisim.com>, and <frigidaireservisim.com> are not identical to Complainant's trademarks, the Panel agrees with Complainant that the disputed domain names are confusingly similar.
The Complaint is somewhat inconsistent and confusing. Throughout, Complainant avers that it is owner of the three trademarks in many worldwide registrations, yet in one instance, Complainant writes “As earlier mentioned the actual trademark owner is the company Electrolux Home Products, Inc, [sic] which is owned by Electrolux Holdings Inc. (96.3%) and Electrolux Deutschland GmbH (3.61%). These two companies are wholly owned (100%) subsidiaries of AB Electrolux.”
The Panel's viewing of listings on publicly available government trademark registration websites clarifies that Complainant is owner of the ELECTROLUX and AEG trademarks, while the listed owner for the FRIGIDAIRE mark is Electrolux Home Products, Inc. (Complaint, Annex 5 listing alleged owners of trademarks without priority dates, registration classes or registration numbers). In the absence of a reply by Respondent, the Panel accepts Complainant's representation that Electrolux Home Products, Inc. is ultimately wholly owned by Complainant, and therefore treats the three marks as under Complainant's ownership for purposes of this proceeding.
Panels disregard the domain name suffix in evaluating confusing similarity. See, VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The disputed domain names incorporate Complainant's trademarks in their entirety, differing from the marks only by adding the Turkish word “servisim” for service. The Panel concludes that the addition of the descriptive term “servisim” does not negate the confusing similarity created by Respondent's complete inclusion of Complainant's marks in the disputed domain names. See F. Hoffmann-La Roche AG v. ActiveIdeas.com, Jason Peterson, WIPO Case No. D2007-1567; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137.
The Panel finds, therefore, that the disputed domain names are confusingly similar to Complainant's registered trademarks and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. (Policy, paragraphs 4(c)(i) – (iii)).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use Complainant's marks in the domain names and that Respondent is seeking to attract Internet users through the widely known marks for Respondent's own purposes.
There is no indication on the record that Respondent is commonly known by the disputed domain names, that Respondent has a legitimate non-commercial interest, or that Respondent is making fair use of the disputed domain names. The Panel therefore finds that Respondent's use of the disputed domain names demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain names.
While there may have been an offering of goods or services, based on Complainant's description of the past appearance of the website at “www.electroluxservisim.com”, and the annexed screen print of the website at “www.aegservisim.com”, Respondent's websites are presently inaccessible to the public. Therefore the Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain names.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent's concealment of identity or failure to reply to a complaint. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy.
The Panel infers that Respondent was aware of Complainant's trademarks which have been registered and used widely for many years. The Panel further infers that Respondent registered the disputed domain name intending to trade on the renown of Complainant's trademarks. The Panel finds that Respondent deliberately attempted to attract Internet users to his websites for commercial gain, by creating a likelihood of confusion with Complainant's marks. The Panel concludes, therefore, that Respondent registered the domain names in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
While the record is bereft of information regarding the content that may once have been posted on at least one of the three websites to which the disputed domain names route, mere passive holding has been held to constitute use of the domain name in bad faith. Telstra Corporation Limited, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085. Having refrained from replying to the Complaint or demand letters, or to provide any evidence demonstrating good faith intentions or plans for legitimate use of the websites, Respondent has failed to rebut Complainant's contention that the registrations are being used in bad faith.
The Panel therefore concludes that the disputed domain names were registered and are being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.4
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <aegservisim.com>, <electroluxservisim.com>, and <frigidaireservisim.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: December 19, 2008
1 The Panel has undertaken limited research by visiting archives of the web pages. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Complainant's Annex 8 shows screen prints of the website at “www.aegservisim.com” which appears to promote service for “AegElectrolux.”
2 Complainant provides no proof in support of its claim to priority dates, however. In its annexes to the Complaint, Complainant provides lists of hundreds of its trademark registrations (without identifying the relevant dates or classes), and hundreds of its domain name registrations (without providing dates or other details).
3 This somewhat cryptic conclusion is typical of the confusing manner in which the Complaint is presented. There are also errors and omissions to the annexes listed in the Complaint.
4 The Panel finds it unnecessary to determine whether, as invited by Complainant, Respondent's registration of the three disputed domain names in this proceeding and the alleged registration of a third party's trademark in another domain name, constitutes a pattern of registrations incorporating well-known trademarks as referred to in 4(b)(ii) of the Policy.