WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Karaca Grup Ltd. Sti
Case No. D2011-1626
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Karaca Grup Ltd. Sti of Beytepe, Turkey.
2. The Domain Names and Registrar
The disputed domain names <444aeg.com> and <444electrolux.com> (the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2011. On September 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 29, 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 for the Domain Names.
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 September 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2011. A communication was received from “Mehmet Atıf Karaca” on October 4, 2011, which the Center acknowledged on October 5, 2011.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 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.
On November 28, 2011, the Panel issued an Administrative Procedural Order requesting that the Respondent substantiate its statements as included in the communication of October 4, 2011. The Respondent has failed to provide this substantiation.
4. Factual Background
The Domain Names were registered on May 19, 2011.
The Complainant is the owner of (amongst others) the Community Trademark Registrations for AEG and ELECTROLUX. The aforementioned Community Trademark Registrations are hereinafter collectively referred to as the “Trademarks”.
5. Parties’ Contentions
The Complainant has put forward the following statements.
The Complainant is the owner of the Trademarks. The Trademarks are well-known trademarks for appliances and equipment for kitchen, cleaning and outdoor products due to extensive and long-term use. The Trademarks and several similar trademarks are registered in 150 countries over the world.
The dominant part of the Domain Names comprises the Trademarks. The addition of the numerals “444” will not have any impact on the overall impression of the dominant part of the Domain Names. With reference to Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes. The prefix “444” are merely numbers, which doesn’t distinguish a the Doman Names.
In addition, the Respondent lacks rights or legitimate interests in the Domain Names.
First of all, no license or authorization of any other kind has been given by the Complainant to use the Trademarks.
Secondly, the Respondent is not commonly known by the Domain Names.
Thirdly, the Respondent is not using the Domain Names for the bona fide offering of goods or services. Complainant has taken note that the Respondent has also registered the domain name <444bosch.com> and concludes that such pattern of conduct demonstrates that the Respondent registers domain names including well-known trademarks associated with white goods and claims to offer services of said trademarks on the websites linked to this type of domain name. With reference to Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk, WIPO Case No. D2011-0403, this cannot be regarded as a bona fide offering. Further, referring to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the absence of any license from the Complainant to use its Trademarks or to apply for domain names comprising the Trademarks, no actual or contemplated bona fide offering could be claimed by the Respondent.
Moreover, the Domain Names were registered and are being used in bad faith.
The Complainant sent a cease and desist letter to the Respondent before commencing these proceedings, but the Respondent has not responded to that letter. Further, referreing to Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc. WIPO Case No. D2002-0787, such failure to respond to the letter of demand of the Complainant may further supports an inference of bad faith.
The Domain Names are currently connected to websites offering services for household products in Turkish. Consequently, the Respondent is using the Domain Names 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 for example at <444bosch.com> and is by this behavior engaged in a pattern of conduct to trade on well-known trademarks and attract visitors to the websites.
The Respondent has argued that it is specialized in repairing the goods sold under the Trademarks. Additionally, the Respondent has stated that there is a disclaimer on its website explaining that there is no relationship between the Complainant and the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:
- The Domain Names registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used in bad faith.
As the Respondent did not submit a formal Response or reply to the Panel Order requesting substantiation of the claims made in its communication to the Center, the Panel will decide this matter on the basis of the substantiated Record.
A. Identical or Confusingly Similar
The evidence shows that the Complainant has rights in the Trademarks. The Complainant has undisputedly stated that the Domain Names are confusingly similar to the Trademarks.
The Panel finds that the addition of the prefix “444” does not alter this confusing similarity.
The Respondent has also not rebutted this. To the contrary, the Respondent has stated that it is specialized in repairing goods under the Trademarks.
Therefore Complainant has proven that the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. As a consequence, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the Domain Names. The Panel finds that the Complainant has established such a prima facie case due to the fact that it has stated that it has not granted the Respondent permission to use the Trademarks as Domain Names.
With reference to Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2011-0903, the Panel finds that the Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, as the Respondent has not complied with the requirements set out in the aforementioned decision. To be bona fide, the offering must meet several requirements. Those at the minimum, the following:
- The Respondent must actually be offering the goods or services at issue. See e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- The Respondent must use the domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell NIKON and competitive cameras not a legitimate use); Fleming Sales Company, Inc. v. David Marketing Group, WIPO Case No. D2006-1174 citing Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
- The website at the domain name must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official site, if, in fact, it is only one of many sales agents. See e.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website's use of complainant's logo, and lack of any disclaimer, suggested that website was the official CURIOUS GEORGE website); R.T. Quaife Engineering v. Bill Luton, WIPO Case No. D2000-1201(no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
In this case, the Panel finds that the Respondent's conduct does not meet all these requirements. Further, this Panel finds that without express authority of the relevant trademark holder, a right to resell or distribute that trademark holders’ products does note create a right to use a domain name that wholly incorporates the relevant trademark. The Respondent is not an authorized repair center, nor has the Complainant authorized the Respondent to use the Trademarks as a domain name. The statement that the Respondent is a specialized repair center of the products bearing the Trademarks has not in any way whatsoever been substantiated. The Panel has ordered the Respondent to submit such substantiation, but the Respondent has failed to do so. Therefore, the Panel concludes that the Respondent has not sufficiently rebutted the Complainant’s prima facie case that the Respondent lacks legitimate rights in the Domain Names.
Accordingly, the Panel finds that the Respondent does not have a legitimate interest (under the Policy) in using the Domain Names and thus concludes that also the second element is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant has prima facie established that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a third-party online location, by using the Domain Names, by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of the Domain Names. The Respondent has not rebutted the Complainant’s allegations.
Therefore, the Panel finds that the third element has also been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to the Complainant.
Willem J. H. Leppink
Dated: December 6, 2011