WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Eduardo Palau
Case No. D2013-1399
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Eduardo Palau of Sant Adrian Del Besos, Spain.
2. The Domain Name and Registrar
The disputed domain name <aegasistencia.com> is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2013, 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.
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 August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 4, 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 is the owner of the trademark AEG registered before the European Community under number 000005967 (Annex 6.2 to the Complaint).
The Complainant is a Swedish joint stock company founded in 1901, today a world leading producer of home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year under brands such as ELECTROLUX, AEG, ZANUSSI, EUREKA and FRIGIDAIRE.
Currently no active website resolves to the disputed domain name.
5. Parties’ Contentions
According to the Complainant, the disputed domain name reproduces its registered trademark and several domain names in numerous countries (Annexes 6 and 7 to the Complaint), being confusingly similar to the AEG trademark given that the addition of the suffix “asistencia“ is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, AEG, instantly recognizable as a famous trademark.
Furthermore, the suffix “asistencia” which translated into English means “assistance” is associated with the Complainant since its trademark is widely known in connection with home appliances and the repair services thereof, characterizing such combination of the suffix and the Complainant’s trademark a possible impression that the disputed domain names belongs to, or is affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name;
ii. no license or authorization of any kind has been given by the Complainant to the Respondent to use the AEG trademark, not being the Respondent an authorized dealer of the Complainant’s products nor has he ever been in a business relationship with the Complainant;
iii. the disputed domain name was used in connection with a website offering repair services for house hold products (Annex 11 to the Complaint), seeking to create an impression of association with the Complainant;
iv. the Respondent did not adequately disclosed the relationship, or lack thereof, between the Respondent and the Complainant, thus conveying the false impression that the Respondent is an authorized reseller/service center for the Complainant’s products, and
v. the Complainant tried to contact the Respondent on May 9, 2013, through a cease and desist letter to the email address displayed at the WhoIs database, advising the Respondent of its rights and requesting the transfer of the disputed domain name as well as offering compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). No response was received and a first reminder was sent. The Respondent then replied in Spanish with the signature “Confort Climavent S.L” and removed the AEG logo from the website, but no disclaimer was added in the website resolving to the disputed domain name. A second reminder was sent without any reply (Annex 11 to the Complaint), what lead to the filing of this Complaint in view of the unsuccessful attempt to amicably solving the question.
In what it relates to the bad faith in the registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given the reproduction of its logotype in connection with one of the products typically manufactured by the Complainant in the website that resolved to the disputed domain name, being it only possible to conclude that the Respondent knew about the Complainant’s trademark and reputation, and used them to its advantage in bad faith.
Lastly, the Respondent, by using the disputed domain name, is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the AEG trademark.
In this Panel’s view the suffix “asistencia”, which translated into English means “assistance”, is easily associated with the Complainant since its AEG trademark can be considered well-known in connection with home appliances and the repair services thereof, thus not sufficient to avoid a risk of undue association by the Complainant’s customers or Internet users in general.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v.Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainant’s statement that no authorization or license was granted for the use of the AEG trademark in the disputed domain name corroborate with the indication of a lack of legitimate right in the disputed domain name.
The question then falls under whether legitimate interest could be found in view of the services being advertised through the disputed domain name, i.e., repair or assistance services for house hold appliances.
According to the evidence submitted by the Complainant (Annex 10 to the Complaint – print-outs of the website that resolved to the disputed domain name) indeed no express disclaimer was made as to a lack of relationship between the parties. Furthermore, the use of an image reproducing a product commonly manufactured by the Complainant and the Complainant’s logo in that product, lead this Panel to the conclusion that the Respondent was seeking to create an impression of association with the Complainant, what does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark logotype in connection with one of the products commonly manufactured by the Complainant in the website that resolved to the disputed domain name.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for his own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <aegasistencia.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: September 17, 2013