WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL Decision
AB Electrolux v. Domain Admin / Sahin Sengor
Case No. D2015-1411
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Domain Admin of Istanbul, Turkey / Sahin Sengor of Istanbul, Turkey.
2. The Domain Names and Registrar
The disputed domain names <aeg-servisi.xyz> and <zanussi-servisi.xyz> are registered with FBS Inc.
FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 11, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2015 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 amended Complaint on August 24, 2015. On August 28, 2015, further to the Center’s communication regarding the language of proceeding, the Complainant has submitted its request for English to be the language of proceeding.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint in both Turkish and English, and the proceedings commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2015.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on October 2, 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
The Complainant, AB Electrolux is a Swedish joint stock company founded in 1901 and is one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products. Having started out with the sale of a single vacuum cleaner, after 90 years of innovations and acquisitions, the Complainant is now a global leader in home and professional appliances.
AB Electrolux owns also the brand AEG (Allgemeine Elektricitäts-Gesellschaft (General Electric Company)). The history of AEG extends back over 120 years and includes not only a groundbreaking heritage in electrical tools and engineering but a formative role in establishing the field of industrial design through its connection with the multitalented German designer Peter Behrens. Initially founded in 1883 as Deutsche Edison-Gesellschaft (DEG), the company took the name AEG in 1887.
The ZANUSSI brand was founded in 1916 and stands for Italian innovation with flair, and its yellow-black color combination and distinctive logo have made it recognizable throughout Europe and neighboring countries for many decades. In 1984, the Complainant acquired the Italian appliance manufacturer Zanussi making the Complainant the leader in household appliances for consumers and professionals. The Complainant has devoted substantial resources to advertising and promoting its trademark ZANUSSI. ZANUSSI is one of the Complainant’s strategic brands, a market leader in white goods and floor care products in Europe with the Middle East being a further growth market for the Complainant.
The Complainant’s trademark registrations predate the registration of the disputed domain names. Due to extensive use, advertising, and revenue associated with its trademarks worldwide, the Complainant enjoys a high degree of renown around the world, including in Turkey where the Respondent is located.
The Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the terms “aeg” and “zanussi” for example <aeg.com> (created on October 19, 1993) and <zanussi.com> (created on November 17, 1995). The Complainant uses these domain names to connect to a website through which it informs potential customers about its AEG and ZANUSSI marks and its products and services.
The disputed domain names <aeg-servisi.xyz> and <zanussi-servisi.xyz> were created on April 20, 2015 (as indicated by the Registrar and the public WhoIs record).
5. Parties’ Contentions
According to the Complainant, the disputed domain names <aeg-servisi.xyz> and <zanussi-servisi.xyz>,which were registered on April 20, 2015, directly and entirely incorporate the Complainant’s well-known, registered trademarks AEG and ZANUSSI. It has been established in previous decisions that AEG and ZANUSSI are considered a well-known trademarks, see for example, Aktiebolaget Electrolux v. Mohammad Aghakhani, WIPO Case No. DIR2014-0008 regarding the domain name <aegcenter.ir>; Aktiebolaget Electrolux v. Marcel Vlaar, WIPO Case No. DNL2008-0005regarding the domain name <zanussiservice.nl>.
The addition of the gTLD “.xyz” does not detract from the confusingly similar nature of the disputed domain names.
Further, each disputed domain name contains only the generic word “servisi” which exaggerates the impression that the Respondent is somehow affiliated with the Complainant, and the Respondent is somehow doing business in Turkey using the Complainant’s brand name.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademarks.
The Complainant states that the Respondent could have easily performed a similar search before registering the disputed domain names and would have quickly learnt that the trademarks are owned by the Complainant and that the Complainant has been using its trademarks in Turkey for numerous of years. There is no evidence that the Respondent has a history of using, or is preparing to use, the disputed domain names in connection with a bona fide offering of goods and services. It is clear that the terms “zanussi” or “aeg” have become a distinctive identifier associated with the Complainant’s goods and that the Respondent’s intention of registering the disputed domain names was to take advantage of an association with the business of the Complainant.
The Respondent is using the disputed domain names to attract Internet users to their websites where they state that they are ZANUSSI or AEG “Teknik Servis” and “AEG online destek” and that they serve customers in Istanbul. A common misunderstanding with authorized or non-authorized repair centers is that they are also of the impression that they can freely register domain names incorporating the trademark name of the products they are offering services on. The Complainant has a clear agreement with all of its authorized partners that this is strictly forbidden.
The Complainant also adds that the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3.
It is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name.
The Complainant first tried to contact the Respondent on May 27, 2015, through a cease and desist letter. No response was received.
The Respondent should be considered to have registered and to be using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6. 1. Language of the Proceeding
Although the language of the Registration Agreements is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English. The Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint and to the Center’s email communication with regard to the language of the proceeding, despite being communicated in Turkish and in English.
6. 2. Substantive Issues
Paragraph 15(a) of the Rules requires the Panel to decide the 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.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the trademarks AEG and ZANUSSI in several classes in different countries including Turkey. The trademarks were registered long before the registration of the disputed domain names.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
In this Panel’s view, the addition of the Turkish term “servisi” meaning “service” does not sufficiently distinguish the disputed domain names from the Complainant’s trademarks.
Finally, the Respondent has brought no argument to contend that the disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. It is clear for this Panel that the Respondent has not demonstrated any bona fide offering of goods or services by using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain names and that use of the disputed domain names does not fall under the Oki Data requirements, as also explained below. The Panel finds that given the use of the disputed domain names to promote its repair services of the Complainant’s products without a clear disclosure of their relationship, when the Respondent registered the disputed domain names it knew that AEG and ZANUSSI were the trademarks of the Complainant, and that it registered the disputed domain names because it would be recognized as such, in order to misleadingly divert consumers for commercial gain. The Respondent’s deactivation of the websites after the Complaint filing is further telling that the Respondent lacks rights or legitimate interest in the disputed domain names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use; however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case. Based on the circumstances, in the Panel’s view, it is reasonable to infer that when the Respondent registered the disputed domain names, it purposefully chose the disputed domain names incorporating the trademarks of the Complainant and registered them in order to take advantage of the strength of the trademarks. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge of the Complainant’s trademarks may be consideredan indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Respondent has never been granted permission to register the disputed domain names. The Respondent takes advantage of the ZANUSSI and AEG trademarks by intentionally attempting to attract visitors to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks 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 Panel notes that the disputed domain names are currently inactive. However, the disputed domain names were previously connected to Turkish websites offering repair services for ZANUSSI and AEG products in Turkey. The websites to which the disputed domain name resolved did not accurately disclose their relationship with the trademark owner, i.e., the Complainant. The disclaimer included at the bottom of the website, translated as “The trademark and the logo displayed on our website are registered to the concerned company. We serve as private technical service for trademark [ZANUSSI or AEG]”, is not, in the Panel’s opinion, prominently displayed. Consequently, the Respondent is using the dispute domain name to intentionally attempt 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 website.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, in accordance with 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 names <aeg-servisi.xyz> and <zanussi-servisi.xyz> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: October 21, 2015