WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Uzunoglu Group Ltd Sti., Erol Uzunoglu
Case No. D2011-0766
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Uzunoglu Group Ltd Sti., Erol Uzunoglu, of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <ankaraelectroluxservisi.com>, <antalyaelectroluxservisi.com>, <aydinelectroluxservisi.com>, <electroluxservisiz.com> and <muglaelectroluxservisi.com> are registered with FBS Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2011. On May 3, 2011, the Center transmitted by email to FBS Inc. a request for registrar verification in connection with the disputed domain names. On May 5, 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.
On May 13, 2011, the Center sent an email communication to the Parties in both Turkish and English regarding the language of the proceedings. On May 16, 2011, the Complainant submitted a request that the language of the proceedings be English, which was not opposed by the Respondent.
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 May 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on June 21, 2011.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on June 29, 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.
Although the language of the Registration Agreement for the disputed domain names <ankaraelectroluxservisi.com>, <antalyaelectroluxservisi.com>, <aydinelectroluxservisi.com>, <electroluxservisiz.com> and <muglaelectroluxservisi.com> is the Turkish language, the Panel determines in accordance with the Complainant’s request and paragraph 11(a) of the Rules, that the language of these administrative proceedings shall be the English language. The Panel concludes that it would not be appropriate given the circumstances of this case to conduct the proceedings in the Turkish language and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings, even though communicated in Turkish and in English.
4. Factual Background
The Complainant is a well-known Swedish joint stock company, which is a leading and widely-known producer of household appliances and equipment, founded in 1901. The Complainant states that the trademark ELECTROLUX has been registered as a word and device mark in several classes in more than 150 countries, including Turkey. Additionally, all of them were registered well before the registrations of the disputed domain names. Furthermore, the Complainant utilizes the trademark ELECTROLUX in domain names under several gTLDs and ccTLDs, e.g. <electrolux.com> and <electrolux.com.tr>.
The Respondent is Erol Uzunoglu, a Turkish individual who is located in Istanbul, Turkey. The disputed domain name <antalyaelectroluxservisi.com> was registered on November 27, 2010, <muglaelectroluxservisi.com> and <aydinelectroluxservisi.com > on November 26, 2010, <ankaraelectroluxservisi.com> on November 25, 2010, and <electroluxservisiz.com> on November 9, 2010. Additionally, each of the disputed domain names comprises not only the mark ELECTROLUX but also one of the generic terms “servisi” or “servisiz” (which stand for “service”, “service for” or “services” in English) and the names of cities in Turkey such as Ankara, Mugla, Antalya and Aydin.
5. Parties’ Contentions
The Complainant avers that Electrolux has leading market positions in white goods and floor-care products in both Europe and North America and is a world leading producer of appliances and equipment for kitchen, cleaning and outdoor use. The Complainant alleges that ELECTROLUX, AEG and FRIGIDAIRE marks are well-known and that it has exclusive rights to use of the marks worldwide.
The Complainant also contends the dominant part of the disputed domain names is the term “electrolux”, which is confusingly similar to the registered trademark of ELECTROLUX. The Complainant also alleges that the suffix “servisi” is a Turkish translation of the English word “service” describing the Complainant’s business, and is rather fitted to strengthen the impression that the disputed domain names are in some way connected to the Complainant. Additionally, the Complainant contends that the suffix “servisi” is not relevant and will not have any impact on the overall impression of the dominant part of the names, and ELECTROLUX is instantly recognizable as a world famous trademark. The Complainant further contends that the Respondent intentionally chose the disputed domain names based on its trademarks to generate traffic to the Respondent’s web sites and that the Respondent is trying to “sponge off” of the Complainant’s “world famous” trademarks.
The Complainant states that the Respondent does not have any registered trademark or trade names corresponding to the disputed domain names. In addition, the Complainant notes that no license or authorization of any other kind has been given to the Respondent by the Complainant, to use the trademark. The Complainant also avers that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services but has intentionally chosen domain names based on registered trademarks in order to generate traffic to web sites where a phone number to a service company for white-goods is shown. By doing this, the Respondent is misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the Complainant’s trademarks. Three of the disputed domain names are currently parked by the Respondent. This, however, does not create rights or legitimate interests in the disputed names.
The Complainant also avers that a cease and desist letter was sent on February 4, 2011 to the Respondent by email and it was advised that the Respondent’s 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 the Respondent. The Complainant sent a reminder by post and email on April 2, 2011 and the Complainant did not receive any response to any of these notifications.
On the basis of the above, the Complainant requests transfer of the disputed domain names.
The Respondent did not formally reply to the Complainant’s contentions.
The Panel also notes that the Respondent sent an email communication to the Center dated June 21, 2011, in Turkish language stating “bu isimleri kullanmıyorum. istediginiz nedir anlamadım? domainleri size verebilirim. nasıl size akdaracagım.turkce yazarsanız iyi günler” which could be translated in English as “I do not use these domain names. I do not understand what you demand from me. I can transfer these domain names to you. How can I transfer these domain names? It would be nice if you could communicate in Turkish. Have a nice day”.
Therefore, the Panel takes note of the fact that the Respondent is willing to agree to the transfer of the disputed domain names to the Complainant.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel agrees that, although the disputed domain names <ankaraelectroluxservisi.com>, <antalyaelectroluxservisi.com>, <aydinelectroluxservisi.com>, <electroluxservisiz.com> and <muglaelectroluxservisi.com> are not identical to the Complainant’s trademarks, they are confusingly similar since the term “Electrolux” is the distinctive term in the disputed domain names. The Panel also notes that the mere additions of “servisi” or “servisiz” do not avoid the risk of confusion with the Complainant’s marks. See F. Hoffmann-La Roche AG v. ActiveIdeas.com, Jason Peterson, WIPO Case No. D2007-1567; Aktiebolaget Electrolux v. Ferhat TUNALI, FBS (DI_4010121)/SENOL KARAKAYA/PrivacyProtect.org, WIPO Case No. D2010-1791.
Furthermore, the Panel notes that four of five disputed domain names comprise the name of cities in Turkey such as Ankara, Antalya, Aydın and Mugla. Therefore, the Panel finds that the incorporation of such generic terms and the addition of the name of the cities do not negate the confusing similarity between the Complainant’s trademark and the disputed domain names. Moreover, the full inclusion of the Complainant’s well-known mark may cause the false impression that any offered product or service under the disputed domain names is linked to the Complainant.
As a conclusion, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered trademarks and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
The Panel notes that the Respondent does not have any registered trademarks or trade names and no licence or authorization of any other kind has been given by the Complainant to use its registered trademark.
The Panel also confirms that the Respondent has not made demonstrable preparations to use the disputed domain names or name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
Additionally, the Panel notes that, the Respondent has not replied any of the Complainant’s or the Center’s correspondences, apart from submitting an email communication to the Center that indicates the willingness to transfer the disputed domain names to the Complainant. Hence the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain names.
Therefore, The Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) and 4(b) of the Policy, the Complainant may show one of the following circumstances, in particular but without limitation, in order to demonstrate the Respondent’s bad faith in registration and use of the disputed domain names:
(i) circumstances indicating that the Respondent has registered or 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 that Complainant, for valuable consideration in excess of the Respondent’s 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 the Respondent’s web site 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 web site or location or of a product or service on the Respondent’s web site or location.
The Panel confirms the reputation and recognition of the Complainant’s trademark ELECTROLUX and is convinced that the Respondent must have known of this trademark when it registered the disputed domain names.
The Panel also notes that the Complainant has submitted lists of registered trademarks worldwide; however these registrations are not identified with relevant dates or classes. On the other hand the Panel has conducted a search through WhoIs and is convinced that the Complainant has registered its domain names well before the Respondent registered the disputed domain names.
The Panel also infers that the Respondent has registered the disputed domain names merely for the purpose of creating an association with the Complainant and its trademarks. According to the print-outs of the web sites linked to the disputed domain names provided as Annexes to the Complaint, the Panel is convinced that the Respondent has intentionally registered the disputed domain names with the intention to offer services and to create the false impression that the Respondent is an authorized repair and service provider for the Complainant’s products.
Further, the Respondent did not file a formal response to the Complaint. As such, taking into account all the circumstances, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <ankaraelectroluxservisi.com>, <antalyaelectroluxservisi.com>, <aydinelectroluxservisi.com>, <electroluxservisiz.com> and <muglaelectroluxservisi.com> be transferred to the Complainant.
Ugur G. Yalçiner
Date: July 8, 2011