Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Selcuk ABUT, Webevimiz Bilgisayar & internet hizmetleri of Izmir, Turkey.
The disputed domain name <frigidaireizmir.com> is 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 June 9, 2009. On June 9, 2009, 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 name. On June 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 “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 June 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2009.
Respondent did not submit a Response to the Complaint, but on July 10, 2009, the Center received an email note from an individual purporting to be an attorney, referencing the current proceeding. The note to the Center stated “We took the response yesterday. Could you please give us extratime to observe the response .?” In response, the Center asked the individual sending the email for more identity details, and the individual emailed back: “Mr authorized ; I am representative of the company which has registered the frigidaireizmir.com domain name. If you give additional time, we will plead.” The Center replied, asking what length of extension the sender wished to request; the Center wrote that if the sender specified a time period, the Center would then invite Complainant to comment on the extension request.
No further reply to the Center was ever received and Respondent did not submit any Response to the Complaint. Accordingly, the Center notified Respondent's default on July 14, 2009.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 17, 2009. 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.
Through Complainant's company Electrolux Home Products Inc., Complainant owns many trademark registrations worldwide for the mark FRIGIDAIRE. Among these registrations are Turkish Trademark Registration Nos. 89/007640 and 90/005128.
The disputed domain name was registered June 11, 2008. The web pages to which the disputed domain name routes currently displays a parking page with sponsored advertising links.1
Complainant avers that Electrolux is a Swedish company founded in 1901 and that Complainant is a leading producer of appliances and equipment for kitchens and cleaning.
Complainant alleges that its FRIGIDAIRE marks are well-known and that it has registered the trademark Frigidaire as a word mark in respect of appliances and equipment for kitchen, cleaning and outdoor products in several classes all over the world.
Complainant alleges that the disputed domain name is confusingly similar to Complainant's mark. Complainant alleges that the addition of the geographic suffix “izmir,” (a reference to Turkey's third-largest city) is not relevant and does not reduce the confusing similarity which results from Respondent's adoption of its trademark in the dominant portion of the disputed domain name. Complainant also contends that Respondent is exploiting the goodwill and image of Complainants trademark, which may result in dilution and other damage to Complainant.
Complainant contends that Respondent registered the disputed domain name after the vast majority of registrations for the FRIGIDAIRE mark were completed.2 Complainant avers that Respondent has no connection with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the trademarks. Complainant contends, therefore, that Respondent has no legitimate interest and that Respondent's use of the disputed domain name 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 Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761.
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, and that Respondent's web page offers services for FRIGIDAIRE products; therefore the value and goodwill associated with the marks could not have been unknown to Respondent. Moreover, Complainant contends that Respondent is an Internet service provider, and not a party which seems to be using the domain name to provide services connected to FRIGIDAIRE products. Therefore, Complainant reasons, such use must be in bad faith. Complainant adds to this contention that there is no disclaimer to alert visitors that the website to which the disputed domain name routes is not the web site of Complainant or a website authorized by Complainant.
Complainant avers that on October 7, 2008, Complainant sent a cease and desist letter to Respondent. After receiving no reply, Complainant avers, it sent a reminder on October 14, 2008, which also went unanswered.
On the basis of the above, Complainant concludes that Respondent must be considered to have registered and be using the disputed domain name in bad faith. Complainant seeks transfer of the disputed domain name.
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 name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not respond to the allegations of the Complaint. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain name is not identical to Complainant's trademark, the Panel agrees with Complainant and concludes that Respondent's domain name is confusingly similar to Complainant's trademark.
The disputed domain name <frigidaireizmir.com> is made up of the simple combination of Complainant's trademark and the name of a major Turkish city.
Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
Consistent with previous decisions, the Panel agrees that the addition of a city name to Complainant's trademark does not alter the confusion with Complainant's mark that Internet users would experience. E.g., NBC Universal, Inc. v. Supercue, WIPO Case No. D2008-0851.
Moreover, panels disregard the domain name suffix in evaluating confusing similarity. E.g., 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.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) 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 the respondent. See, e.g., 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 the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Respondent's website presently offers sponsored link advertising. By diverting traffic to third parties using paid link advertisements, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use the “FRIGIDAIRE” mark in its domain name and that Respondent is not commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainant's widely known marks for Respondent's own commercial purposes.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or 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 name.
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 lack of conceivable good faith uses for the domain name or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Respondent registered the disputed domain name with awareness of Complainant's marks, which had already been registered in many countries including Turkey, and used for several years. The Panel infers that the original domain name registration was made with the intention of trading on the value of Complainant's mark, as demonstrated by the screen shots of Respondent's website, which display Complainant's logo. The Panel finds therefore that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. The Panel concludes, therefore, that Respondent registered the domain name in bad faith for purposes of the Policy.
The Panel also concludes that the circumstances show bad faith use of the domain name by Respondent, as elaborated below.
As demonstrated by the evidence submitted by Complainant, Respondent used the website to promote services under the FRIGIDAIRE brand, with no disclaimer to alert users that Respondent was not authorized by Complainant. Currently available online screens from Respondent's website show that Respondent uses the domain name to display sponsored advertising links to products and services entirely unrelated to Complainant and its FRIGIDAIRE products. Moreover, Respondent's website also displays advertising links to “Refrigerateurs Ariston.” The Ariston line of products are made by the Indesit Company, one of Complainant's major competitors in Europe. Respondent has also declined to submit a Response to these proceedings, or to the demand letters sent by Complainant.
With the addition of the word “Izmir” to Complainant's FRIGIDAIRE trademark, the Panel finds that there is no conceivable good faith use in the present record for the domain name <frigidaireizmir.com> by Respondent.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
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 name, <frigidaireizmir.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: July 31, 2009
1 Complainant's Annex 12 shows screen prints of the website to which Respondent's domain name apparently linked at some time in the past (Complainant does not specify). The website at that time appears to have displayed a blurred image of Complainant's Frigidaire logo, offering service related to Frigidaire products, in Turkish.
The Panel has undertaken limited research by visiting the web pages, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Respondent's website currently displays a parking page displaying sponsored link advertising, but no longer displays Complainant's logo.
2 Complainant provides no proof in support of its claim to priority dates, however. In its annexes to the Complaint, Complainant provides lists of many of its trademark registrations without identifying the relevant dates or classes. The Panel has determined, however, that Complainant possesses relevant trademark registrations in Turkey for the FRIGIDAIRE mark. See, e.g., http://online.tpe.gov.tr/trademark/search/trademark/e_tmsearch.jsp.