WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Baris Kose
Case No. D2011-0522
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Baris Kose of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <electroluxklimaservisi.com> is registered with FBS Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2011. On March 22, 2011, the Center transmitted by email to FBS Inc. a request for registrar verification in connection with the disputed domain name. On March 23, 2011, FBS Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2011.
The Center appointed Stefan Abel as the sole panelist in this matter on May 20, 2011. 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. It has been necessary to extend the due date for decision in accordance with paragraph 10(c) of the UDRP Rules to the date indicated under paragraph 7 below.
Language of The Proceeding
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the registration agreement for the disputed domain name is Turkish. The Center sent a language communication to both parties in both English and Turkish. The Complainant has requested that English be the language of the proceeding. In this case, the language communication from the Center, informed the Respondent that if the Respondent did not object by the due date to a language request by the Complainant, the Center would proceed on the basis that the Respondent did not object to the Complainant’s request that English be the language of the proceeding. The Respondent did not object.
The Complainant does not point out any circumstance indicating that the Respondent understands the Complaint written in English.
The Panel is concerned about deciding this particular case without notification of the Complaint in the language of the registration agreement. Although the Respondent did receive a copy of the WIPO Center’s language document and the covering notification of proceeding document in both Turkish and English, the Panel may not presume that the Respondent has taken notice of the Complaint and its arguments.
In view of this Panel, the default of Respondent to object to the Complainant’s request that English be the language of the proceeding about which he has been informed in Turkish is one relevant consideration to weigh in the balance in determining the appropriate language of the proceeding. But it is not the only consideration, as the Panel must weigh the interests of fairness with the interests of expedition.
This Panel finds that Pargraph 11 (a) of the Rules, ordering that the language of the Complaint should normally be the language of the registration agreement is an important rule relating to due process of law and the right to be heard. Given the relative paucity of Complainant’s arguments on language, it may have been better if the Complainant had either filed its Complaint in Turkish, or at least submitted its English-language Complaint accompanied by Turkish language translation.
According to paragraph 11 (b) of the Rules, the Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation. Despite this Panel’s finding that the Complaint itself should in this particular case have been filed and notified to the Respondent in the Turkish language for the purpose of the Complainant’s request to transfer the disputed domain name, the Panel does not elect to do so here but rather considers this to be unnecessary since the Panel finds the Complaint does not support the Complainant’s request for transfer anyway on the record in these proceedings. (see below under 6 C).
4. Factual Background
The Complainant is a Swedish joint stock company and a world-leading producer of appliances and equipment for kitchen and cleaning and also one of the largest producers in the world of similar equipment for professional users. The Complainant has registered the trademark ELECTROLUX as a word and figurative mark in several classes in many countries all over the world long before the registration of the disputed domain name. The Complainant’s business also extends to Turkey. The disputed domain name contains, in addition to the element ELECTROLUX, the element “klimaservisi”, which means air conditioning service.
The Respondent has registered the domain name on December 21, 2010. The disputed domain name is inactive. The site at the disputed domain name is marked “under construction” and only advertises the Registrar’s services.
The Complainant sent a cease and desist letter in English language to the Respondent on February 4, 2011 and a reminder on March 2, 2011, also in English. The Respondent did not reply.
5. Parties’ Contentions
In summary, the Complainant’s contentions are as follows:
The element “electrolux” of the disputed domain name is instantly recognizable as a world famous trademark. The term “klimaservisi” is connected to the Complainant since its trademark is widely known for conducting business with home appliances and service and repair of the same so that said suffix is rather fitted to strengthen the impression that the domain name belongs to, or is affiliated with the Complainant. The domain name is therefore confusingly similar to the Complainant’s trademark. There is a considerable risk that the trade public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization of any other kind to use the trademark has been granted by the Complainant to the Respondent. The mere administration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The trademark ELECTROLUX is a well-known and reputed trademark with a substantial and wide-spread reputation throughout the whole community and throughout the world. The famousness of the Complainant’s trademark is supported by a number of third party domain name registrations comprising the trademark and having increased in the last few years as reflected by a number of WIPO cases.
The Respondent is trying to sponge off the Complainant’s world famous trademark. The Respondent’s bad faith is supported by the Respondent’s default to reply to the Complainant’s cease and desist letter and reminder. The inactive holding of the disputed domain name further supports the finding of a bad faith registration. There is no doubt that the Respondent was aware of the rights the Complainant has in the trademark ELECTROLUX and the value of said trademark. The Respondent is misleadingly diverting consumers for his own commercial gain. Consequently, the Respondent must be considered to have registered and be using the domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4 (a) (i) to (iii) of the Policy.
(i) The disputed domain name is identical and confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith
Paragraph 4 (b) of the Policy sets out the circumstances which, in particular without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or confusingly similar
The Panel finds that the domain name at issue is confusingly similar to the Complainant’s trademark ELECTROLUX. The disputed domain name consists of the trademark in combination with the term “elektroservisi” (air conditioning service). This term describes services related to the Complainant’s business. The term “klimaservisi” added to the Complainant’s company name in the disputed domain name therefore does not only lack any distinctive character with regard to the signs owned by the Complainant but reinforces the confusing similarity of the domain name to these trademarks.
The Panel finds that the first element of the Policy has been satisfied.
B. Rights or legitimate interest
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademarks or to register the disputed domain name.
The Panel finds that the Complainant has established a prima facie case, that the Respondent lacks rights and legitimate interest in the disputed domain name. The burden of proof therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this argument of the Policy. It is an often impossible task for the complainant to prove a negative that is primarily within the knowledge of the respondent such as lack of rights or legitimate interests in the domain name. Producing evidence that the respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) of the Policy if the respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP panel decisions (see, e.g., Belupo DDV. WACHEM d.o.o., WIPO Case No. D2004-0110).
C. Registered and used in Bad Faith
The Panel finds that the Complainant has not on balance established this element as required by paragraph 4(a)(iii) of the Policy for the following reasons:
The Complainant did not prove any circumstances indicating that the Respondent has acquired the disputed domain name primarily for transferring the domain name for substantial remuneration or that the Respondent has engaged in a pattern of conduct to prevent the trademark owner from reflecting the mark in the corresponding name or that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor so that evidence according to paragraph 4 (b) (i), (ii) or (iii) of the Policy is not established. While the Complainant’s mark is well-known, there is nothing in the provided record indicating an attempt having been made to profit from sale to the rights holding Complainant.
There is also no provided evidence that the Respondent has (yet) attempted to attract Internet users for commercial gain to website at the disputed domain name. Instead, the domain name is inactive, so that no finding of bad faith can be based as such on paragraph 4(b)(iv) of the Policy.
Apart from the circumstances set out under paragraph 4(b) of the Policy, registration and use in bad faith may also be found if other circumstances indicate registration and use in bad faith. The Complainant, however, does not demonstrate circumstances which this Panel finds sufficient to establish on the present record registration and use in bad faith as required under paragraph 4(a) of the Policy.
In particular, the Panel finds, that the following circumstances are on balance insufficient to serve as dispositive evidence for registration and use in bad faith:
(i) No definite conclusion of bad faith can be inferred from the fact that the Respondent did not respond to the Complainant’s cease and desist letter and reminder. While a failure to respond may be a relevant consideration in appropriate cases, there may also be legitimate reasons not to respond to a cease and desist letter that do not indicate any bad faith of the addressed party, for example the conviction of the third party that the claims raised are obviously unjustified, that the third party finds it useless to respond out of a formal proceeding but prefers to raise a defense only in a subsequent court or alternative dispute resolution proceeding. Moreover, in the case at hand, the Respondent may not have replied simply because he did not understand the correspondence due to language problems.
It is true that some UDRP panel decisions refer to a failure of the respondent to respond to a letter of demand when evaluating the evidence of bad faith. But many of these decisions take this into account as an indication of bad faith only if there are supplemental circumstances demonstrating bad faith. In the case at hand, there is no present evidence of abusive use before the Panel, and there are few other elements of record (other than possibly the fame of the mark itself) indicating bad faith; moreover, the letter has not been sent in the national language of the Respondent so that a default of response does not mean anything.
(ii) Inactive or passive holding of a disputed domain name may in certain circumstances amount to bad faith but it does not automatically give rise to such finding as such. This Panel shares the broad consensus of previous WIPO UDRP decisions that an inactive holding of a domain name may amount to bad faith but only where the totality of the circumstances so warrant. In general, the Panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances supporting a finding of bad faith in so-called passive holding cases include the complainant having a well-known trademark, a lack of response to the complaint being filed, and any registrant concealment of its identity. Clearly in this case, the Complainant has a well-known mark, and the Respondent has not responded although the latter factor must also be balanced against the Panel’s earlier observations regarding language. At the same time, there is no evidence of the Respondent having concealed its identity, or of the Respondent being a repeat cybersquatter. In the present case, no such circumstances are apparent. Moreover, it appears that the disputed domain name has been registered on December 21, 2010, only. It is not unusual that the preparation of a business and the corresponding website requires several months so that the Panel has difficulties in the particular circumstances in finding that this is necessarily a case of an inactive holding of a domain name in bad faith. Although the list of conceivable good faith uses to which a registrant might put a domain name containing the terms “electrolux” and “klimaservisi” may not be extensive, the Panel can conceive of some such users, and on balance considers the record inadequate and timing premature to judge the Respondent guilty of passive holding in bad faith. Naturally if the present use of the domain name would shift only after the issue of this decision to a use more demonstrably abusive and targeted at Complainant’s mark, this may provide material grounds for possible consideration if another dispute would be brought if and as such development would materialize.
(iii) As it is, on the present record, this Panel finds that the fact that the ELECTROLUX trademark may be famous, does not, in the absence of further circumstances indicating bad faith or typical indicia of cybersquatting, of itself represent sufficient evidence of registration and use in bad faith. Whereas it appears to be likely, that Respondent knew about the Complainant’s trademark when registering the disputed domain name, this Panel finds this likelihood alone insufficient in the circumstances to ground a finding of both registration and use in bad faith, and the present record is insufficient to enable this Panel to conclude on balance that the disputed domain name is presently being passively held in bad faith.
For the foregoing reasons, the Complaint is denied.
Dated: July 8, 2011