WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Domain Admin, whoisprotection biz / Erkan Demirli
Case No. D2015-0450
1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden
Respondent is Domain Admin, whoisprotection biz Istanbul, Turkey / Erkan Demirli of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <servislerelectrolux.com> ("the Domain Name") 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 13, 2015. On March 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 24, 2015.
On March 24, 2015, the Center received Complainant's confirmation regarding the language of proceedings. On March 23, 2015, the Center notified the Parties that the Complaint was filed in English, but that according to the information received from the Registrar the language of the Registration Agreement is Turkish.
On March 25, 2015, the Center received Complainant's confirmation regarding communication to Respondent. Respondent did not reply.
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 Respondent of the Complaint, in both English and Turkish, and the proceedings commenced on March 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 21, 2015.
The Center appointed Clive L. Elliott as the sole panelist in this matter on May 5, 2015. 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
According to the WhoIs the Domain Name was registered on September 1, 2014.
5. Parties' Contentions
Complainant requests that the proceedings be held in English as it would be cumbersome and to Complainant's disadvantage to have to translate the Complaint into Turkish, and if the Panel did not agree to that then Complainant be allowed to submit its documentation in English (while Respondent may still file in Turkish).
Complainant states that it is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919, and is the owner of the trademark ELECTROLUX.
Complainant asserts that it trades under the brand ELECTROLUX, as well as under other brands, and sells 50 million products to consumers living in 150 different countries every year. In addition, Complainant is the market leader in many of the individual product categories in which it competes. Its products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE. Complainant says that in 2014, Electrolux had sales of SEK 112 billion and had around 50,000 employees.
Complainant also asserts that it has registered ELECTROLUX as word and figure trademarks in several classes in more than 150 countries all over the world, including in Turkey, and that the trademark ELECTROLUX was registered long before the registration of the Domain Name. Complainant has also registered the trademark ELECTROLUX as domain names under almost 700 generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) worldwide, among these being <electrolux.com> and <electrolux.tr>. Complainant submits that the awareness of its trademark ELECTROLUX is considered to be significant world wide, and contends that the Respondent, who is situated in Turkey, cannot have been unaware of the trademark at the time of registration or thereafter.
Complainant contends that its trademark ELECTROLUX has acquired the status as a well-known trademark within the areas for appliances and equipment for kitchen, cleaning and outdoor products, due to the extensive and long-term use on products and services of Complainant and, in connection therewith, by substantial costs incurred by Complainant in connection with the production, distribution and advertising with respect to the products and services that are marked by the trademarks. As a result, the trademarks and the products and services designated by this trademark are connected with good reputation and international recognition. For example, ELECTROLUX is included in the "Superbrands 2015" list and Complainant was placed as number 69 on the RepTrakTM 100: The World's Most Reputable Companies' list for 2014.
Complainant states that the mark ELECTROLUX is in possession of substantial inherent and acquired distinctiveness and the awareness of the trademark ELECTROLUX is considered in the whole Community to be significant.
Complainant asserts that the Domain Name comprises the whole term "electrolux" and is confusingly similar to Complainant's trademark ELECTROLUX. Complainant points out that the fame of its trademark has been confirmed in previous UDRP decisions where panels have ruled that "the addition of the word "servisi", which means "service", does not negate the confusing similarity with Complainant's trademarks".
Complainant also points out that the addition of the top-level domain (TLD) ".com" does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant when determining the confusing similarity of the trademark.
Complainant contends that anyone who sees the Domain Name is bound to mistake it for a name related to Complainant, and the likelihood of confusion includes an obvious association with the trademark of Complainant. Complainant submits that there is a considerable risk to the reputation of its ELECTROLUX trademark, that the trade public will perceive Respondent's Domain Name either as a domain name owned by Complainant or that there is a commercial relationship with Complainant. Complainant further submits that by Respondent using ELECTROLUX as a dominant part of the Domain Name, Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant's trademark.
Complainant states that Respondent is not an authorized dealer or service provider of Complainant's products and has never had a business relationship with Complainant. Complainant has not found that Respondent has any registered trademarks corresponding to the Domain Name, nor has Complainant found anything that would suggest that Respondent has been using ELECTROLUX in any other way that would give it any legitimate rights in the name.
Complainant contends that Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services, but instead the Domain Name is connected to a commercial web site offering repair services for some of Complainant's products, as well as providing spare parts. Complainant submits that by using the ELECTROLUX mark in the Domain Name, Respondent is misleading Internet users to its web site and consequently, Respondent is using the trademark ELECTROLUX for a commercial advantage leveraging off Complainant's world famous trademark.
Complainant asserts that Respondent does not adequately disclose the relationship, or lack thereof, between Respondent and Complainant, and that there is no disclaimer on the site. Instead, Respondent refers to itself and its business as "Electrolux Servisi" (which roughly translates to "Electrolux Service"), which conveys the false impression that Respondent is connected to Complainant, or an authorized service provider for Complainant's products.
Complainant notes that Respondent also uses Complainant's trademark protected logotype as well as images of Complainant's products on the website connected to the Domain Name. In general, there is no trade origin displayed on the current website, identifying the actual company that offers the services in questions, other than the above mentioned references. Rather, Respondent makes repeated references to Complainant's famous trademark (the ELECTROLUX mark is mentioned 47 times on the website connected to the Domain Name), and also uses Complainant's logotype.
Complainant states that it first tried to contact Respondent via the administrative contact email address on November 28, 2014, through a cease and desist letter sent by email. Complainant advised Respondent that the unauthorized use of the ELECTROLUX trademark within the Domain Name violated Complainant's rights in said trademark. 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). Complainant later sent the letter to the "abuse contact". Complainant received an email from the address […]@isimtescil.net (which appears to be operated by the Registrar), stating that: "They have not consider the giving the domain names to Complainant".
Complainant submits that Respondent has registered and is using the Domain Name in bad faith and is intentionally attempting to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. And also that it is reasonable to infer that Respondent knew of the trademark of Complainant when it registered the Domain Name and that the reason behind the registration was to take advantage of the strength of said trademark.
No formal response was received from Respondent.
6. Discussion and Findings
6.1. Language of Proceedings
Under paragraph 11(1) 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, the language of the Registration Agreement is Turkish.
Complainant submitted its Complaint in English and requested the language of the proceedings to be English. Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and Turkish. In these circumstances, and taking into account Respondent's default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceedings be English.
Therefore, the Panel has decided to accept Complainant's filings in English and issue a decision in English.
A. Identical or Confusingly Similar
Complainant asserts that it has been using the trademark ELECTROLUX (selling 50 million products to consumers living in 150 different countries every year) and operated its website under the name <electrolux.com> and <electrolux.tr> (for convenience referred to as "Complainant's Trademark") and has acquired valuable rights in Complainant's Trademark in relation to a range of household goods.
The Panel is satisfied that Complainant has established rights in Complainant's Trademark in connection with a range of household goods. In light of Complainant's assertions and lack of any denial by Respondent the Panel accepts that Complainant's Trademark is identified with Complainant and that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is identical or confusingly similar to Complainant's Trademark. That is, on the basis that the Domain Name comprises the term "electrolux" and is confusingly similar to Complainant's trademark ELECTROLUX, along with the addition of the word "servisler", which means "services", and which does not in any way negate the confusing similarity with Complainant's Trademark. That argument has clear merit.
In this particular case the Panel finds:
a) Complainant has rights in respect of Complainant's Trademark.
b) The Domain Name is confusingly similar to Complainant's Trademark in so far as it contains the distinctive element ELECTROLUX along with the descriptive element "servisler".
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
The question of whether Respondent has rights or a legitimate interests in the Domain Name must be assessed against Complainant's rights and assessed taking into account the manner in which Respondent uses the Domain Name. Complainant submits that Respondent is not using the Domain Name for a legitimate purpose, as it contains the entirety of Complainant's ELECTROLUX mark accompanied by the descriptive term "servisler", which simply denotes "services".
Complainant alleges that while Respondent is not an authorised purveyor or service agent of ELECTROLUX branded goods the Domain Name is connected to a commercial web site offering repair services for some of Complainant's products, as well as providing spare parts. Complainant contends that Respondent, by using the ELECTROLUX mark in the Domain Name, is misleading Internet users to its web site and improperly leveraging off Complainant's world famous trademark.
Further, Complainant asserts that Respondent is not adequately disclosing the true nature of the relationship between the parties, or lack thereof and that there is no disclaimer on the site. Instead, Respondent refers to itself and its business as "Electrolux Servisi" (which as noted above roughly translates to "Electrolux Service"), which conveys the false impression that Respondent is connected to Complainant, or an authorized service provider for Complainant's products.
In the absence of any license or permission from Complainant to use Complainant's Trademark, no bona fide or legitimate use of the Domain Name could reasonably be claimed or indeed inferred by the Panel. Under the circumstances it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Having reached the view that Respondent lacks any license or permission to use Complainant's Trademark and for the reasons set out above it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase or service Complainant's household products.
In the absence of any explanation from Respondent as to how and why it chose the Domain Name the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know and wish to either purchase or have serviced Complainant's products sold or serviced under or by reference to Complainant's Trademark.
The Panel thus concludes that the third element of the Policy has been met.
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 <servislerelectrolux.com> be transferred to Complainant.
Clive Elliott QC
Date: May 18, 2015