World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. PrivacyProtect.org / Gokhan KAZAK

Case No. D2012-0987

1. The Parties

The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia and Gokhan KAZAK of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <electroluxbeyazesyaservisi.net> is 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 May 9, 2012. On May 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 14, 2012.

The Center verified that the Complaint together with the amendment to 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 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 6, 2012.

The Center appointed Selma Ünlü as the sole panelist in this matter on June 15, 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.

4. Factual Background

The Complainant, AB Electrolux, 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. Also, 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 brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE. In 2010, the Complainant had sales of SEK 109 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 Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide.

The disputed domain name was registered in the name of Respondent on October 22, 2010 long after the ELECTROLUX trademark was created.

The Complainant first tried to contact the Respondent on February 15, 2011 through a cease and desist letter.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:

(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name is registered and is being used in bad faith

(i) Identity or Confusingly Similarity

The Complainant alleged that, the dominant part of the disputed domain name <electroluxbeyazesyaservisi.net> is “Electrolux”, which is identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as a trademark and in domain names in many countries all over the world.

The Complainant referred to a similar case AB Electrolux v Ilgaz Fatih Micik, WIPO Case No. D2009-0777 and states that the addition of the suffix “beyazesyaservisi” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name since ELECTROLUX is instantly recognizable as a world famous trademark. As the Complainant and its trademark are widely known for conducting business with home appliances, said suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant since the Turkish term “beyaz esya” is generally translated into “electronic household goods” and “servisi” is the Turkish word for “service”. At this point the Complainant referred to Aktiebolaget Electrolux v. Serbay Narin, WIPO Case No. D2009-1444 where the requirement of paragraph 4(a)(i) of the Policy was met for an almost identical domain name as in the present case; <electrolux-beyazesyaservisi.com>.

(ii) Rights or Legitimate Interests

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant also stated that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. According to the Complainant, it is clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark.

The Complainant referred to Drexel University v. David Brouda, WIPO Case No. D2001-0067 and alleged that the respondent was misleading Internet users to a commercial website and tarnished the trademark ELECTROLUX. Therefore, the Complainant states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

In addition, the Complainant referred to LEGO Juris A/S v. Probuilders, WIPO Case No. D2011-0226 and stated that the ELECTROLUX logo is displayed on the website connected to the disputed domain name and this implies a connection between the Respondent and the Complainant.

Moreover, the Complainant states that a text is inserted at the bottom of the webpage which is interpreted as “All logo and brand names mentioned in our web site announcements are registered mark of the concerned company. We serve as a private company. ” Therefore, the Complainant believes that, it confuses the visitor to believe that they are visiting an official website owned by the Complainant.

(iii) Registered and Used in Bad Faith

The Complainant states that the trademark ELECTROLUX has a well-known status with a substantial and widespread reputation throughout the whole Community and throughout the world. Therefore, the Complainant alleges that the awareness of the trademark is to be considered, in the whole Community in general, to be significant and substantial. As an indication, the Complainant set forth that the number of third party domain name registrations comprising the trademark in combination with other words has highly increased during the last years. 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 here.

The disputed domain name is connected to a service company’s website, where facts about goods from ELECTROLUX and other brands are displayed. Therefore, the Complainant referred to Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031 and stated that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.

Lastly, the Complainant says that it tried to contact to the Respondent on February 15, 2011 via a cease and desist letter. However no response was received and their efforts trying to solve the matter amicably were unsuccessful.

Consequently, the Complainant claims that the Respondent must be considered to have registered and be using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to the trademark 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 has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled.

A. Identical or Confusingly Similar

The test for identical or confusing similarity under the Policy, paragraph 4(a)(i), is limited in scope to essentially a direct comparison between the Complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in ELECTROLUX. The disputed domain name consists of the terms “electrolux” and “beyazesyaservisi”.

Based on the evidence submitted by the Complainant concerning the trademark registrations of ELECTROLUX, the Panel finds that the Complainant has successfully proven the earlier registered right for the term “Electrolux”. The Complainant has had trademark registrations for the term “Electrolux” well before the registration date of the disputed domain name.

To the Panel, the disputed domain name consists of only the term “Electrolux” as a core element. It is clear that the disputed domain name is highly similar to the Complainant’s registered trademark right. Moreover, the Complainant’s use of the term “Electrolux” has been continuous for many years and the term has been used as a sole and core element.

Since the Complainant and its trademark is widely known for conducting business with home appliances, the “beyazesyaservisi” phrase, which means “electronic household goods service” is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with Complainant.

In the similar cases Sanofi-Aventis v. Gideon Kimbrell, WIPO Case No. D2010-1559; Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak, WIPO Case No. D2010-0010; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons; WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green, WIPO Case No. D2010-0024, the respective UDRP panels found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark.

Also, in previous cases, UDRP panels have found that neither the beginning of the URL (“http://www.”), nor the gTLD necessarily have any source indicating significance and do not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. See, The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491.

Therefore, the Panel is of the opinion that the “beyazesyaservisi” phrase does not create distinctiveness but contrary it creates confusing similarity between the disputed domain name and the Complainant’s mark. Also in this context the Panel notes that the suffix “.net” has no significance as well.

Hence, the Panel is of the opinion that the requirement of paragraph 4(a)(i) of the Policy is met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You [Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, prove rights or legitimate interests in the disputed domain name.

In the light of the evidence submitted in the case file, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the ELECTROLUX trademark. Therefore, the Panel finds on the current record that the Complainant has proved rights in the ELECTROLUX trademark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the ELECTROLUX trademarks and it is not an authorized service for maintaining ELECTROLUX products.

The Panel is of the opinion that, without express authority of the relevant trademark holder, to be an authorized technical service of that trademark holder’s products does not create a right to use a domain name that is identical, or otherwise wholly incorporates the relevant trademark.

In a very similar case Aktiebolaget Electrolux v. Agustin Acosta, WIPO Case No. D2010-1968, related to the same trademark, the panel indicated:

“In the present case, the Panel found that the addition of the suffix “serviciotecnicomadrid” is not relevant in order to make the disputed domain name distinctive from the trademark and will not have any impact on the overall impression of the dominant part of the disputed domain name, ELECTROLUX, recognizable as a world famous trademark”.

Also the well-known reputation of the Complainant’s trademark has been confirmed in previous UDRP decisions, for example: AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 and Aktiebolaget Electrolux v. Agustin Acosta, WIPO Case No. D2010-1968.

Consequently, in the absence of a response, the Panel accepts the Complainant's allegations as true that the Respondent has no authorization to use the ELECTROLUX trademark in the disputed domain name.

Hence, as the Complainant has made out its prima facie case, and as the rights or legitimate interests of the Respondent have not been duly demonstrated as illustrated under paragraph 4(c) of the Policy, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 website or location or of a product or service on respondent’s website or location.

By consideration of the foregoing, the Panel is of the opinion that due to the earlier registered rights of the Complainant of trademark ELECTROLUX and its extensive and intensive usage, the Respondent, who appears to be located in Turkey, was most likely aware of their existence. See e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.

In the light of evidence submitted in the case file, the Panel is convinced that the disputed domain name was connected to a service company’s website regarding the repair of household goods branded ELECTROLUX.

The Panel additionally finds likely from the case file that the cease letter of the Complainant most probably was not received by the underlying registrant “Gökhan Kazak” since it was sent to the address of PrivacyProtect.org, whereas the address of the underlying registrant was hidden by a proxy registration service.

Moreover, the Panel believes that the Respondent tried to avoid trademark infringement claims by the sentence written on the bottom of the page, translated as “All logo and brand names mentioned in our web site announcements are registered mark of the concerned company. We serve as a private company.” However, it does not remove the likelihood of the situation that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as the web site is regarding the products produced by Complainant and branded under trademark ELECTROLUX. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 3.5).

Consequently, the Panel is of the opinion that:

(i) the Respondent did not offer any counter-argument and remained in default,

(ii) the Complainant’s trademark has a strong reputation and is well known in Turkey,

(iii) the Respondent has not provided any evidence of good faith use; instead, it has actively hidden its real name and contact details by a proxy registration service.

Although using privacy services as in this case is not accepted as a solely sign of bad faith, it is found in many cases that such usage may be in connection with bad faith. See, WSFS Financial Corporation v. Private Registrations Aktien Gesellschaft 2, WIPO Case No. D2012-0033. Also, it is noteworthy to mention that even the UDRP panels who did not find the usage of privacy services as an indication of bad faith, they accepted that “privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere”. See, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.

Therefore, in the light of above mentioned conditions of the present case, the Panel is convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

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 name <electroluxbeyazesyaservisi.net> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Dated: June 29, 2012

 

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