WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux (AB Electrolux) v. PrivacyProtect.org / DERYA KARLIDAĞ

Case No. D2013-0545

1. The Parties

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

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / DERYA KARLIDAĞ of Mersin, Turkey.

2. The Domain Name and Registrar

The disputed domain name <electroluxmersin.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 March 20, 2013. On March 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2013, 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 April 9, 2013, 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 April 9, 2013. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 9, 2013.

On April 9, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On April 9, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments in this regard.

The Center verified that the Complaint together with the amendments 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 April 19, 2013. On May 8, 2013, the Center received an email communication from the Complainant requesting suspension of the administrative proceeding. On May 8, 2013, the Center notified the suspension of the proceeding. On May 9, July 16, July 19 and August 14, 2013, the Center received informal email communications from the Respondent. Further extension requests were requested by the Complainant on June 7, June 24, July 8, July 19 and August 9, 2013. On August 13, 2013, the Complainant requested the reinstitution of the proceeding. On August 14, 2013, the Center re-instituted the proceeding and in accordance with the Rules, paragraph 5(a) the due date for Response was August 15, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified about the commencement of panel appointment procedure on August 16, 2013.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on August 27, 2013. 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 one of the world’s leading producers of appliances and equipment for kitchen and cleaning. The Complainant is the owner of the registered trademark ELECTROLUX as a word and figure mark in several classes in many countries, including Turkey. A list of these trademark registrations is attached to the Complaint.

The Complainant has also registered the trademarks FRIGIDAIRE, ELECTROLUX and AEG as domain names under several generic top-level domains (gTLD) and country-code top-level domains (ccTLD). The Complainant has several registered trademarks in Turkey for the terms “electrolux”, “aeg” and other derivative trademarks. The earliest protection dates as listed in the Turkish government trademark registry with respect to ELECTROLUX is 1996.

The Complainant has registered a number of domain names containing the term “electrolux”, for example, <electrolux.com> (created on April 30, 1996) and <electrolux.com.tr> (created on August 7, 1997). The registration of these domain names predates the registration of the disputed domain name.

The disputed domain name was registered on December 11, 2012. The Panel visited the disputed domain name on September 6, 2013, and observed that it resolves to a website which essentially comprises a link to “www.siemensmersin.com” where the Complainant’s goods and those of its competitors are offered.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant asserts that the disputed domain name comprises the word “electrolux” which is identical to its registered trademark ELECTROLUX. The Complainant states that the fame of ELECTROLUX has been confirmed in previous UDRP decisions and asserts that the addition of “mersin” is not relevant and does not have an impact on the overall impression of the dominant part of the disputed domain name, ELECTROLUX. The Complainant further asserts that the addition of a generic top-level domain, for example “.com”, is irrelevant for the assessment of confusing similarity between a trademark and a domain name.

Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have any registered trademarks or trade names that correspond to the disputed domain name, nor is the Respondent a licensee of the Complainant. The Complainant has not given the Respondent any permission to register its trademark as a domain name. Further, the Complainant asserts that the Respondent is not an authorized dealer of its products, and has no business relationship with it, a factor that establishes an absence of a right or legitimate interest on the part of the Respondent.

The Complainant further asserts that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the disputed domain name. The disputed domain name resolves to a website which essentially comprises a link to “www.siemensmersin.com” where the Complainant’s goods and those of its competitors are offered. The Complainant contends that the Respondent is thus misleadingly diverting Internet users to commercial websites and consequently, tarnishing the trademark ELECTROLUX. According to the Complainant, the Electrolux logo is also displayed in the websites to which resolves the disputed domain name. The Complainant asserts that it has been successful in numerous UDRP cases in relation to unrelated websites that incorporate the ELECTROLUX trademark selling and offering services for Electrolux products, for instance in Aktiebolaget Electrolux v. PrivacyProtect.org / Gokhan KAZAK, WIPO Case No. D2012-0987, Aktiebolaget Electrolux v. Yalcin Senturk, WIPO Case No. D2012-0742 and Aktiebolaget Electrolux v. Samet Bal and Firat Parto, WIPO Case No. D2011-2283. The Complainant points out that in the first mentioned case ( WIPO Case No. D2012-0987) under similar circumstances the panel concluded that such use could not be considered bona fide use. According to the Complainant, the Respondent is attempting to “sponge off” the Complainant’s world famous ELECTROLUX trademark.

Further, the Complainant submits that the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant asserts that the Respondent does not adequately disclose the non-existence of any relationship between the Respondent and the Complainant, nor are there any visible disclaimers that the relevant websites are not endorsed or sponsored by the Complainant; and finally there is a copyright text displayed at the bottom of the website. This further enhances the false impression that there is a connection between the Respondent and the Complainant.

The Complainant also asserts that the website associated with the disputed domain name redirects to “www.siemensmersin.com”, where several of the Complainant’s competitors’ products are being offered for sale, which is an improper use of the Complainant’s trademark.

Registered and Used in Bad Faith

The Complainant contends that the trademark ELECTROLUX is a well-known mark with a substantial and widespread reputation throughout the European Community and the world. Further, the Complainant contends that “the failure of the Respondent to respond to a letter of demand from the Complainant further supports an inference of bad faith” (citing Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Such failure is also present in this case, as the Respondent did not reply to the Complainant’s cease and desist letter sent by email on February 1, 2013. The Complainant asserts that the disputed domain name resolves to a website containing a link to “www.siemensmersin.com” which offers Electrolux products for sale and those of competitors, and that the Respondent is thus using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

B. Respondent

The Respondent did not file a formal response to the Complainant’s contentions.

On May 9, 2013, the Center received an informal e-mail communication from the Respondent in English. In the e-mail communication, the Respondent stated that they are a dealer of Electrolux products in Mersin and they use the disputed domain name for the sale and promotion of Electrolux products in Mersin. They registered the disputed domain name to be found on search engines and that they are willing to transfer the disputed domain name.

6. Discussion and Findings

6.1 Language of the Proceedings

Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, as confirmed by the current Registrar of the disputed domain name, the language of the Registration Agreement is Turkish.

The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. The Respondent did not submit a response, however submitted an informal e-mail communication in English, and did not object to the language of the Complaint and did not request Turkish to be the language of the proceedings. There is no agreement between the parties with respect to the language of the proceedings.

Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the parties with respect to the language of the proceedings, the Panel is granted power to determine the language of the proceedings having regard to the circumstances of the case.

Both Parties have been given a fair opportunity to present their case and the Respondent has been notified in both Turkish and English. Further, the Respondent’s informal communications with the Center were made in English and demonstrated that he was able to understand the Complaint. Therefore, the Panel is in the opinion that the Respondent has had no difficulty in understanding the Complainant’s contentions.

Accordingly, the Panel accepts the Complaint in English and decides to render the Decision in English.

6.2. Substantive Elements of the Policy

The Panel turns to the merits of the case. Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:

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

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

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark ELECTROLUX as evidenced in the annexes to the Complaint.

In relation to the disputed domain name, it is clear that the disputed domain name fully incorporates the Complainant’s trademark and the only difference between the disputed domain name and the Complainant’s trademark is the addition of the word “mersin” and the “.com” extension.

The Panel is in the opinion that the addition of the word “mersin”, which is a city in Turkey, does not negate the confusing similarity with the Complainant’s trademark. “On the contrary, the nature of the generic terms used would tend to reinforce consumers’ erroneous conclusion that the websites to which the disputed domain names resolve are somehow legitimately included in the supply and service system established by the Complainant under its ELECTROLUX trademark”, Aktiebolaget Electrolux v. Ibrahim Yurtcu, WIPO Case No. D2013-0796.

The Panel further finds that the addition of the “.com” extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar with the Complainant’s ELECTROLUX trademark.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o. , WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, the Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges the Respondent’s reason for registering the disputed domain name is to “sponge off” the Complainant’s ELECTROLUX trademark.

Although the Respondent asserts in its informal email communication that it is a dealer of Electrolux products in Mersin and they use the disputed domain name for the sale and promotion of Electrolux products in Mersin, the Respondent has failed to submit proof of its assertions. Therefore, the Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.

With respect to bona fide offering of goods, in order for an offering to be bona fide for purposes of this proceeding, the Respondent must actually use the disputed 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. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. The Panel visited the disputed domain name on September 6, 2013, and found that the disputed domain name resolves to a website in Turkish that includes a link to “www.siemensmersin.com” offering appliances and furniture for sale, including Electrolux products and other competing products. Therefore, the Panel finds that, even if the Respondent had proven the fact that it is an authorized dealer of Electrolux products, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services as it uses the disputed domain name in connection with offering competing goods.

The website associated with the disputed domain name is a commercial website and the Respondent has stated in its informal email communication that it uses the disputed domain name for the sale and promotion of Electrolux products in Mersin. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. The Respondent did not submit a formal response. Moreover, the Respondent in its email communication of May 9, 2013, indicated that it acquired the disputed domain name “only to be found” in search engines and agreed to transfer the disputed domain name to the Complainant, which alone may serve in appropriate circumstances as a basis for the Panel to grant the remedy sought by the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.13). In light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 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 the respondent's website or location or of a product or service on the respondent’s website or location.

The Complainant’s trademark ELECTROLUX was registered and used before the Respondent’s registration of the disputed domain name. The Respondent’s website associated with the disputed domain name contains a link to “www.siemensmersin.com” which offers Electrolux products as well as competing products. Therefore, the Respondent was aware of the Complainant’s trademark ELECTROLUX at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Further, the fact that the Respondent’s website uses the Complainant’s trademark ELECTROLUX to link to “www.siemensmersin.com” offering competing products to those manufactured by the Complainant suggests that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and 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.

After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element 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 <electroluxmersin.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: September 11, 2013