WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Reza Aeg-Electric Bolvare Shikh Mofid
Case No. D2011-1990
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Reza Aeg-Electric Bolvare Shikh Mofid of Sirjan, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <aeg-electric.net> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (“OnlineNic”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2011. On November 14, 2011, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the disputed domain name. On November 15, 2011, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact information.
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) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2011.
The Center appointed Felipe Claro as the sole panelist in this matter on January 18, 2012. 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 of the Rules.
4. Factual Background
The Complainant, AB Electrolux, is a Swedish company founded in 1901 and formally registered in 1919. AB Electrolux is a world leading producer of appliances and equipment for kitchen and cleaning. Electrolux is also one of the largest producers in the world of similar equipment for professional users. In addition, Electrolux leads the market in many of the individual product categories in which it competes.
Electrolux sells more than 40 million products to customers in 150 countries every year. The company focuses on innovations that are thoughtfully designed, based on extensive consumer insight, to meet the real needs of consumers and professionals. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as AEG, AEG-Electrolux, Electrolux, Zanussi, Eureka and Frigidaire. In 2010, Electrolux had sales of SEK 109 billion and 55,150 employees.
The trademark AEG has gained its prestige due to the extensive and long-term use of the products and services of the Complainant and, in connection therewith, the tremendous costs incurred by the Complainant in connection with the production, distribution and advertising of the products and services bearing a well-known trademark associated with high quality within the areas for appliances and equipment for floor care, air conditioning, sewing machines, etc. As a result, the trademarks and the products and services designated by this trademark are connected with good reputation and international recognition. The AEG brand exemplifies all that the best German marks stand for: a strong heritage, exceptional engineering, and enviable innovation.
AEG was founded in 1883 in Berlin by Emil Rathenau, who had bought a few patents from American inventor Thomas Edison. The company was first known as Deutsche Edison Gesellschaft für angewandte Elektricität (DEG) but was renamed to Allgemeine Elektricitäts Gesellschaft (AEG) in 1887. Initially, AEG only produced electric light bulbs. Over the years, it evolved to include everything from cars, trains, power tools and electric machines to instruments, cables, nuclear power, motors, microelectronics, etc.
Moreover, AEG has, from the beginning, always been characterized by pioneering achievements synonymous with German engineering, thoughtful performance and precision. In its essence, the brand is about functional style and form, that combines top performance with excellent German design. This is stated in the tagline: “Perfekt in Form Und Funktion”. The brand is founded on more than 120 years of innovation.
The Complainant has registered the trademark AEG as word and device marks in several classes in countries all over the world. The trademark AEG was registered long before the registration of the Domain Name. The Complainant has also registered the trademark AEG as a domain name under several gTLDs and ccTLDs worldwide, among these being <AEG.com>.
5. Parties’ Contentions
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant further asserts that the Respondent has registered and is using the Domain Name in bad faith because the dominant part of the Domain Name <aeg-electric.net> comprises the term “AEG” which is identical to the registered trademark AEG, which has been registered by the Complainant as trademarks and domain names in numerous countries all over the world.
The Complainant is the owner of the worldwide registered trademark AEG. The Respondent has registered the Domain Name which is confusingly similar to the trademarks owned by the Complainant. The addition of generic term to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s failure to file a response as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed representations. In that regard, and apart from deciding this proceeding on the basis of Respondent’s default, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to the trademark AEG. The Domain Name comprises the trademark AEG. The addition of the suffix “electric” is not relevant and will not have any impact on the overall impression of the dominant part of the name AEG, which is instantly recognizable as the world famous trademark. The suffix is an English word which is closely connected to the Complainant’s electrical products. In AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777, regarding the domain name <electrolux-aeg-servisi.com>, the panel stated that “Respondent’s addition of the generic term “service” does not reduce that confusion”. The same discussion applies in the current case, namely the Domain Name adding the generic term “electric”.
The addition of the top-level domain (Tld) “.net” 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.
With reference to the reputation of the trademark AEG there is a considerable risk that the 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. By using AEG as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may likely result in the dilution and other damage for the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the 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.
In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”. See also Akbank v. Dr. Mehmet Kahveci, WIPO Case No. 2001-1488 and Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh, WIPO Case No. D2003-0494, etc.
The Respondent registered the Domain Name on July 3, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
Because the Respondent has no registered trademarks or trade names corresponding to the Domain Name, the Respondent may not claim any rights established by common usage. In Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, WIPO Case No. D2001-0826, the Panel was of the opinion that “The Respondent is not connected to the subject Domain Name either through its name or its business”, which clearly indicated lack of legitimate interest.
The Respondent has intentionally chosen the Domain Name based on registered trademarks in order to generate traffic to a commercial website. The website has the look and feel of an official website luring visitors into believing that the Complainant is operating the website. By doing this, the Respondent is misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the Complainant’s trademarks. There is no disclaimer on the website declaring the non-relationship with the trademark holder.
The Respondent uses the Domain Name as a gateway to what appears to be an official website. The Respondent is not a reseller of AEG nor has it received any permission to register the Domain Name. The website is maintained in German; the Respondent is located in Iran and when entering the Respondent’s email address in Google, multiple Chinese web forums are returned mentioning the Respondent’s email address. It would seem as if the Respondent has some sort of business in China. There appears to be no rhyme or reason behind this registration. Instead, the Respondent has intentionally chosen the Domain Name based on a registered trademark in order to generate traffic to sites where visitors would enter the website with the belief that the website is affiliated with the Complainant or has been endorsed by the Complainant. Similar elements can be found in Aktiebolaget Electrolux v. shang hai guang dian dian qi ji tuan gu fen you xian gong si, WIPO Case No. D2009-1443, where the Respondent also registered a domain name, <aeg-powercontrol.com>, connected to what appeared to be an official website by the Complainant. Likewise, the Respondent had placed the Complainant’s logo and product’s bearing the Complainant’s trademark was seeking to be sold through the website.
No evidence has been found that the Respondent uses the name as a company name or has any other legal rights in the names AEG. The absence of the portion “reza” in the domain name is in the Panels’ opinion a clear indication of that. The Respondent is trying to “sponge off” the Complainant’s world famous trademarks. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the Panel stated that “rights or legitimate interests cannot be created where the user of the Domain Names at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”
The Respondent has no rights or legitimate interest in respect of the Domain Name.
C. Registered and Used in Bad Faith
The considerable value and goodwill of the Complainant’s trademark is, most likely, a significant reason for why the Respondent registered the Domain Name at issue here. Since the Respondent appears to be offering service for products of the brand AEG which has not been granted by the Complainant by license or permission, the Respondent is misleading Internet users by suggesting a relationship with the Complainant that in fact does not exist. The nature of the website to which the Domain Name leads leaves little doubt that the Respondent was aware of the Complainant and its mark. There is a strong indication that the Respondent intentionally chose the Domain Name based on the Complainant’s registered well established trademarks in order to generate more traffic to his website. In other words, the Domain Name has been registered and is being used in bad faith.
The Complainant first tried to contact the Respondent on September 22, 2011 through a cease and desist letter by e-mail. The Complainant advised the Respondent that the unauthorized use of the AEG trademark within the Domain Name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the Domain Name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). There was no reply from the Respondent and a reminder was sent on September 27, 2011. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith, as exemplified in News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Domain Name is currently connected to a website seemingly identical to the official AEG website. The Respondent is also using the Copyright symbol at the bottom of the page which enhances the impression that the Respondent in some way is associated with the Complainant. On the Respondent’s website, Complainant’s products are offered without permission to do so. A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements. One of these requirements is that the site shall accurately disclose the registrant’s relationship with the trademark owner. Nowhere does the Respondent point out the relationship (or lack thereof) between himself and the Complainant. None of the above criteria are met in the current case.
In Aktiebolaget Electrolux v. Maksim, SPD Chervinchuk, WIPO Case No. D2011-0403, regarding the domain names <electrolux-ua.com> and <zanussi-ua.com>, the Panel found that all circumstances showed that the respondent used the domain names in bad faith. As similar circumstances prevail here, their conclusion is of interest: “Moreover, there is ample evidence before this Panel that the Respondent intended to trade on the Complainants’ reputation. The creation of a Domain Name confusingly similar to the ELECTROLUX trademark; the use of the ELECTROLUX logotype; the re-creation of the look and feel of the Complainant’s official website on the Respondent’s “www.electrolux-ua.com” website; and the absence of disclaimers disclosing the real relationship between the parties (or more specifically, the lack of any relationship) indicates to this Panel that the Respondent knew about the Complainant’s trademark and reputation, and used them to his advantage in bad faith.”
In another case, Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031, regarding the domain name <grupoelectrolux.com>, the panel there stated that, “…by registering and using the disputed domain name incorporating the Complainant’s widely-known and widely-registered trademark ELECTROLUX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant.” These circumstances apply in this case as well.
The Respondent was aware of the rights the Complainant had in the trademark AEG and the value of said trademark at the time of the registration. By using the Domain Name, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is instead misleadingly diverting consumers for his own commercial gain. The Respondent has failed to respond to any of the Complainant’s request for transfer. In such circumstances, the Respondent must be considered to have registered and be using the Domain Name 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 Domain Name <aeg-electric.net> be transferred to the Complainant.
Dated: February 1, 2012