Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Aida Ebrahimpour, Mrdomain, Islamic Republic of Iran.
The disputed domain name <aegco.ir> is registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2020. On January 30, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 3, 2020, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 7, 2020.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 12, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2020. On March 6, 2020, the Center notified Respondent’s default.
The Center appointed Scott R. Austin as the sole panelist in this matter on March 10, 2020. 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.
Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support that:
1) “Complainant 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 products and floor care products”;
2) Allgemeine Elektricitäts-Gesellschaft (“AEG”) which translates into English as “General electricity company”, was a German producer of electrical equipment since 1887 that Complainant acquired in 1994;
3) The AEG trademark (“AEG Mark”) “is one of the most famous trademarks of the Complainant for kitchen and cleaning appliances for both consumers and professional users”;
4) “Complainant has registered also a number of domain names under generic Top-Level Domains (‘gTLD’) and country-code Top-Level Domains (‘ccTLD’) containing the term AEG, <aeg.com> (created on October 19, 1993), and <electrolux-aeg.com> (created since 2007)”;
5) “The Complainant uses these domain names to connect to a website through which it informs customers about its brands, its products and services”;
6) “Complainant holds numerous worldwide trademark registrations for [the AEG Mark] including in the Islamic Republic of Iran, such [as] International Trademark Registration no. 802025, registered in 2002 and designating [Islamic Republic of] Iran”;
7) The disputed domain name was registered on August 26, 2019, and redirects traffic to a website openly and expressly offering the disputed domain name for sale. The website also appears to offer telephone assistance services and information that may be related to the AEG phones.
Complainant contends, in relevant part, as follows:
(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has established trademark rights because:
a) “The [AEG Mark] has acquired the status of well-known trademark due to extensive and long-term use on products and services of the Complainant”.
b) The disputed domain name contains the AEG Mark in its entirety “and only differs from the Complainant’s AEG [Mark] due to the addition of the generic and descriptive term ‘co’, which is a common term to refer to ‘company’”.
c) “[T]he addition of the generic Top-Level Domain (‘gTLD’) or (‘ccTLD’), such as ‘.ir’ is irrelevant in the comparison under the Policy, and […] [i]t is standard practice to ignore the ccTLD suffix where it is a generic or geographical indication”.
d) The “G” in Complainant’s AEG mark stands for the German term “Gesellschaft”, which in English means “company”.
(2) Respondent has no rights or legitimate interests in the disputed domain name because:
a) “The Respondent is not affiliated with the Complainant in any way, neither did the Complainant authorized the Respondent to use and/or register domain names incorporating the AEG [Mark]”.
b) “Respondent has nothing to do with the Complainant and […] Respondent is not commonly known as ‘AEG Co.’ and/or ‘aegco.ir’”.
c) “The Respondent is making a commercial use of the Disputed Domain Name, with clear intent for commercial gain by means of misleadingly divert consumers [. . .] [who are] redirected to https://domainpark.mrdomain.ir/?domain=aegco.ir which is an auction site for domain names”.
d) “The Complainant was the previous owner of the Domain Name, but due to technical issues, the domain name was transferred away without the Complainant’s approval”.
e) “Respondent grabs domain names and tries to sell them via an auction site”.
(3) The disputed domain name has been registered and is being used in bad faith because:
a) “Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 or location or of a product or service offered on the Respondent’s website or location”.
b) “Respondent is taking advantage of the good reputation of the Complainant’s AEG trademark and is causing confusion among the Complainant’s clients in [Islamic Republic of ] Iran”.
c) “The incorporation of the AEG trademark in the Disputed Domain Name and the Respondent’s connection with the offering of assistance services and information about AEG phones” “suggests that the Respondent’s business is in a way authorized by the Complainant for said purposes in Iran”.
d) “Respondent registered the domain name primarily for the purpose of selling it to Complainant or to one of its competitors for valuable consideration in excess of Respondent’s out-of-pocket expenses”.
e) Respondent has a record of registering well-known trademarks in domain names under the “.ir” ccTLD, including the disputed domain name and has thereby established a pattern of bad faith conduct supporting a finding of bad faith.
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered or is being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant holds numerous worldwide registrations for the AEG Mark, including in the Islamic Republic of Iran where the Respondent is based, and has established trademark rights in and to the AEG Mark, including in the Islamic Republic of Iran. The Panel also finds that Complainant’s AEG Mark is well known given the extensive and long-term use on products and services of Complainant demonstrated in the Annexes attached to the Complaint.
It is well established by prior decisions with which the Panel agrees, that under both the irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”)1 for the disputed domain name to be found identical or confusingly similar to Complainant’s AEG Mark, the relevant comparison is with the second-level portion of the disputed domain name, and that the TLD, whether a gTLD such as “.com”, or ccTLD such as “.ir”, may generally be disregarded. See, e.g., AB Electrolux v. SEHAWI Trading Co. (LTD), WIPO Case No. DIR2016-0034; Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812; RapidShare AG, Christian Schmid v. Helena Clouse, WIPO Case No. D2010-1086; see also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11, (TLD as technical requirement for domain name registration is disregarded under the confusing similarity test).
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms (“co” here) on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (the issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense [an issue more properly considered under the legitimate interest and bad faith factors], but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.).
The Panel also notes that section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”.
Given that Complainant’s AEG Mark is readily recognizable as incorporated in its entirety into the disputed domain name here, this Panel finds the disputed domain name confusingly similar to the AEG Mark in which Complainant has established trademark rights.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element”, WIPO Overview 3.0, section 2.1.
As set forth in Section 5.A. above, Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, stating, without challenge by Respondent, that Complainant has nothing to do with Respondent, has never authorized the Respondent to register or use domain names, including the disputed domain name incorporating the AEG Mark, and that Respondent is not commonly known.by the disputed domain name.
Prior panels under the UDRP have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”).
Complainant provides the relevant WhoIs record in support of its contention that Respondent is not commonly known by the disputed domain name. Upon review of the evidence submitted the Panel agrees with Complainant. See Marriott Int’l, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name).
Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been authorized or licensed to use Complainant’s AEG Mark or is commonly known by the disputed domain name. Based on the foregoing and the Panel’s review of the evidence submitted by Complainant, the Panel finds Respondent is neither authorized to use nor commonly known by the disputed domain name and Complainant has made out its prima facie case under this element of the Policy.
Accordingly, as a result of Complainant’s allegations sufficient to meet its burden of a prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Whether a domain name is registered or used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
The Panel finds that Respondent has registered and used the disputed domain name in bad faith for at least the following reasons.
Complainant first contends Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s AEG Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location, establishing bad faith under the Policy, paragraph (4b)(iv). Prior UDRP panels have found such conduct, by itself, to constitute bad faith registration and use of the domain names. See Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 (bad faith found for website content offering technical support services for complainant’s home appliances using complainant’s mark); Aktiebolaget Electrolux v. Agustin Acosta, WIPO Case No. D2010-1968.
In support of this contention Complainant submits in the Annexes to its Complaint screen shots of Respondent’s website which is accessed through the disputed domain name incorporating the AEG Mark. The website appears to offer telephone assistance services and information that may be related to AEG phones. Complainant contends Respondent’s website is taking advantage of the good reputation of Complainant’s AEG Mark and is causing confusion among Complainant’s clients in the Islamic Republic of Iran. Accordingly, the Panel holds that Respondent has registered and used the disputed domain name in bad faith because Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion between the disputed domain name and Complainant’s AEG Mark, as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Complainant also contends the disputed domain name was registered and used in bad faith because Respondent is in the business of registering domain names and listing them for sale. The disputed domain name redirects to an auction site, “www.mrdomain.ir” where Complainant shows in evidence submitted with the Complaint that the disputed domain name is offered for sale at auction to the highest bidder.
UDRP panels have held that “The language at such site – ‘This domain is for sale’ – clearly suggests that Respondent registered the domain name primarily for the purpose of selling it to Complainant or to one of its competitors for valuable consideration in excess of Respondent’s out-of-pocket expenses” and therefore supports a finding of bad faith. See Royal Bank of Canada v. Namegiant.com, WIPO Case No. D2004-0642.
Finally, Complainant has provided evidence of at least four additional instances where Respondent has registered well-known trademarks in domain names. Annexes to the Complaint show Respondent has registered domain names <longiowatch.ir>, <aeroflex.ir>, <amcor.ir>, and <armanni.ir>, incorporating the registered marks for the brands LONGIO (“www.longiowatch.com”), AERO-FLEX (“www.aero-flex.com”), AMCOR (“www.amcor.com”), and ARMANI (“www.armani.com”). In the Panel’s opinion, this list demonstrates that Respondent has clearly engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that the registration of the disputed domain names was in bad faith under the Policy, paragraph 4(b)(ii). See Helmut Lang New York, LLC v. Kailong Wen, WIPO Case No. D2013-0147 (four domain names sufficient to find a pattern of bad faith under the UDRP, paragraph 4(b)(ii)).
The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 disputed domain name <aegco.ir> be transferred to Complainant.
Scott R. Austin
Sole Panelist
Date: March 25, 2020
1 Given the similarities between the irDRP and the UDRP, the Panel finds UDRP precedent to be relevant for this case.