WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux (AB Electrolux) v. Baris Kose
Case No. D2011-1238
1. The Parties
The Complainant is Aktiebolaget Electrolux (AB 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 (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2011. On July 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2011, the Registrar 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”).
On July 25, 2011, the Center sent an email communication to the parties in both Turkish and English regarding the language of the proceeding. On July 25, 2011, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any response.
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 August 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2011.
The Center appointed Dilek Ustun as the sole panelist in this matter on September 1, 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.
4. Preliminary Issues
Language of the Proceeding
Although the language of the Registration Agreement is in the Turkish language, the Panel determines in accordance with the Complainant’s request and the Rules 11(a), that the language of these administrative proceedings shall be the English language. The Panel finds that it would be inappropriate 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.
5. Refiled Complaint
In Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703, the panel found that there were no rules relating to rehearing of a complaint and concluded that: “It is therefore appropriate to consider by analogy well-understood rules and principles of law relating to the re-litigation of cases determined after a defended hearing.” One of the circumstances which may warrant a rehearing “is the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing…”.
The panel referred to the following considerations in relation to fresh evidence:
“…first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial; second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible.”
In Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490 the following general principles were noted: “First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint needs to be clearly identified by the refiling complainant.”
In NAF Claim No. 93913, ImageShack Corp v. Steven Baxt , the panel held:
“Complainant has presented fresh evidence not available at the time of the original Complaint, namely, the subsequent grant of a trademark to it. The Panel can now consider the Complaint on the basis that the disputed domain name is identical to a trademark in which Complainant has rights. It is well settled under the UDRP precedent that a domain name registration may precede the granting of the trademark and that the grant of the trademark long after registration of a domain name is still enough to satisfy the requirements of the first limb of the Policy.”
It now appears generally accepted in WIPO UDRP decisions that the principles relating to permitting the refiling of complaints have been established by the decisions in WIPO Case No.s. D2000-0703 and D2000-1490, as mentioned above. A helpful summary of relevant later decisions is to be found in Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No.. DWS2002-0001.
In Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082 the panel reached the same conclusion as that in Creo, supra. “The Panel considers that the new Complaint is based both on new evidence in relation to the acts which formed the basis of the original compliant, and on acts which have occurred subsequent to the decision on the original complaint.”
“This new evidence was not in existence at the time of the earlier decision and was therefore unable to be considered by the prior panel in relation to its original finding under the threshold first element of the Policy. The Panel therefore finds that the refiled Complaint should be heard by the present Panel.”
The Panel further notes paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) which indicates the circumtsances under which a refiled case can be accepted.
This Panel notes that this case involves the same Complainant, the same Respondent and the same domain name as the prior case Aktiebolaget Electrolux v. Baris Kose, WIPO Case No. D2011-0522.
According to the Complainant, in the earlier filed dispute the disputed domain name was connected to a website “under construction” and commercial advertisements of the concerned registrar were displayed.
Currently, the disputed domain name redirects to an active website where the Respondent is offering Electrolux services in Turkish.
The Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a web site claiming to offer services of Electrolux goods. Nowhere on the site is there any information about the service company offering said services. The only contact information is an email address and phone number, but no contact name, address or company name. The text on the site only refers to “Electrolux klima servisi” (in Turkish), which means “Electrolux air conditioning service” in English, and which is not the business name of the Respondent.
Also, the Complainant indicates that the Respondent operates other similar websites at the following domain names: <boschklimaservis.com>, <haierklimaservis.com>, <acsonklimaservisi.com>, <sigmaklimaservis.net> <goodmanklimaservis.com> and <arcelikklimaservis.net>, which all contain well-known trademarks (BOSCH, HAIER, ACSON, SIGMA, GOODMAN and ARCELIK (Turkish trademark)) within the electrical white goods field and the generic term “klimaservis”. The websites connected to these domain names display the same information and pictures as on the website connected to disputed domain name, however the brand name displayed on the products are replaced with the trademarks BOSCH, HAIER, ACSON, SIGMA, GOODMAN or ARCELIK. Also, the same phone number is displayed as contact number in all such websites.
In the light of above new facts and evidence the Panel therefore finds that the re-filed Complaint should be heard by the present Panel.
6. Factual Background
The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant is also one of the largest producers in the world of similar equipment for professional users. In addition, they are the market leader in many of the individual product categories in which they compete.
The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE. In 2008, the Complainant had sales of SEK 105 billion and 55,150 employees.
The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the disputed domain name (which was registered in December 2010). The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide.
7. Parties’ Contentions
According to the Complainant, the dominant part of the disputed domain name <electroluxklimaservisi.com> comprises the term “electrolux”, which is confusingly similar as well as identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. Also, the addition of the generic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is therefore irrelevant to determine the confusing similarity of the trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark.
The trademark ELECTROLUX belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the trademark is to be considered, in the whole Community in general, to be significant and substantial. The number of third party domain name registrations, comprising the trademark in combination with other words, has skyrocketed the last years, for example, see Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031; Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277; Aktiebolaget Electrolux v. Nomad Marketing, Ltd., WIPO Case No. D2010-1205; Aktiebolaget Electrolux v. Michael Dieckmann, WIPO Case No. D2010-1203; AB Electrolux v. Kelli Cristina Coco Petrucci, WIPO Case No. D2010-0836; Aktiebolaget Electrolux AB v. Sun Qifeng, WIPO Case No. D2010-0633; Aktiebolaget Electrolux v. Sas Adrian, WIPO Case No. D2010-0336; Aktiebolaget Electrolux v. Mehmet Kirci, WIPO Case No. D2010-0305; Aktiebolaget Electrolux v. Domains by Proxy, Inc., DomainsByProxy.com, /My Co Dean, WIPO Case No. D2010-0135; Aktiebolaget Electrolux v. DomainsByProxy.com / My Co Doan, WIPO Case No. D2010-0134; Aktiebolaget Electrolux v. Globaltek International Mexico, SA DE C.V., WIPO Case No. D2009-1472. The considerable value and goodwill of the mark ELECTROLUX is most likely a large contribution to this and also what made the Respondent register the disputed domain name.
The Complainant first tried to contact the Respondent on February 4, 2011 through a cease and desist letter. No response was received so a reminder was sent on March 2, 2011.
This Complaint is a re-filing of WIPO Case No. D2011-0522 as new circumstances are at hand which the Complainant argues demonstrate an abusive registration.
The disputed domain name is currently connected to a website offering services of Electrolux goods. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. Also, it has been established by the Complainant that the Respondent is using the same model for other websites including other brands (<boschklimaservis.com>, <haierklimaservis.com>, <acsonklimaservisi.com>, <sigmaklimaservis.net> <goodmanklimaservis.com> and <arcelikklimaservis.net>) and is by this behavior engaged in a pattern of conduct to trade on well- known trademarks and attract visitors to its websites.
Consequently by referring to the above-mentioned the Respondent must be considered to have registered and be using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
8. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the disputed domain name. The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these: <electrolux.com.tr> (registered by Electrolux Turkey), <electrolux.com> and <electrolux.co.uk>.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel’s view, the addition of the term “klimaservisi” (meaning “airconditioning service”) does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
Additionally the Respondent did not reply to the Complainant’s contentions.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use formerly made of the disputed domain name, when the Respondent registered the disputed domain name it knew that ELECTROLUX was the trademark of the Complainant, and that he registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
Therefore, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
It is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, 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. In view of the above, and specifically to Section 5 of this decision, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain name or that there is conceivable good faith use for the domain name. After examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <electroluxklimaservisi.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: September 15, 2011