WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Murat Cayiroglu, Nesiline Bilisim Teknolojileri
Case No. D2015-1508
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Murat Cayiroglu, Nesiline Bilisim Teknolojileri of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <aeg-servis-istanbul.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 August 24, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2015, 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. On August 28, 2015, the Center received the Complainant's request for English to be the language of proceeding, to which the Respondent did not reply.
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 and 4, the Center formally notified the Respondent of the Complaint in both Turkish and English, and the proceedings commenced on September 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 28, 2015.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on October 15, 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 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 term "aeg" for example <aeg.com> (created on October 19, 1993). The Complainant uses these domain names to connect to a website through which it informs potential customers about its AEG mark and its products and services.
The official website for the brand AEG for Turkey is "www.aeg.com.tr".
The disputed domain name <aeg-servis-istanbul.com> was created on March 27, 2015 (as indicated by the Registrar and the public WhoIs record).
5. Parties' Contentions
According to the Complainant, the disputed domain name <aeg-servis-istanbul.com>, which was registered on March 27, 2015, directly and entirely incorporates the Complainant's well-known, registered trademark AEG. It has been established in previous decisions that AEG is considered a well-known trademark, see for example, Aktiebolaget Electrolux v. Mohammad Aghakhani, WIPO Case No. DIR2014-0008 regarding the domain name <aegcenter.ir>.
The addition of the gTLD ".com" does not detract from the confusingly similar nature of the disputed domain name.
Further, the disputed domain name contains only the geographical reference "istanbul" (Istanbul is a city in Turkey where the Respondent is also located.). This geographical reference 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.
Furthermore, the disputed domain name also contains the generic word "servis" which is also 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 name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. 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 name and would have quickly learnt that the trademark is 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 name in connection with a bona fide offering of goods and services. It is clear that the term "aeg" have become a distinctive identifier associated with the Complainant's goods and that the Respondent's intention of registering the disputed domain name was to take advantage of an association with the business of the Complainant.
The Respondent is using the disputed domain name to attract Internet users to its website where the Respondent states that they are "AEG beyaz eşya servisi" / "AEG SERVİSİ GARANTİSİ" / "aeg servisleri" moreover 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 its authorized partners that this is strictly forbidden. The agreements that are signed between the Complainant and its licensees / distributors clearly stipulate that they are not entitled to register domain names incorporating the Complainant's trademark.
The Respondent's layout including a homemade AEG logo in red appears prominently on the top left and strongly suggests that there is a connection with the Complainant. While there can be no objection to the Respondent advertising on its website that it offers repairs for AEG products and offers AEG products for sale. The use of the trademark AEG in the disputed domain name strongly suggests that there is some official or authorized link with the Complainant for the purposes of repairs and services within Turkey.
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 name 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 name is 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 name; and
(iii) that the disputed domain name has been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the trademark AEG in several classes in different countries including Turkey. The trademark was registered long before the registration of the disputed domain name.
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, in line with prior UDRP decisions, the addition of a geographic term to a registered mark, in this case of "istanbul" is not sufficient to overcome a finding of confusing similarity between the disputed domain name and the Complainant's mark. See WIPO Overview 2.0, paragraph 1.9.
Additionally, the addition of the Turkish term "servis" meaning "service" does not sufficiently distinguish the disputed domain name from the Complainant's trademark.
Finally, the Respondent has brought no argument to contend that the disputed domain name is 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 name. 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 name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name and that use of the disputed domain name does not fall under the Oki Data requirements, as also explained below. The Panel finds that given the use of the disputed domain name to promote its repair services of the Complainant's products without a clear disclosure of their relationship, when the Respondent registered the disputed domain name it knew that AEG was the trademark of the Complainant, and that it registered the disputed domain name because it would be recognized as such, in order to misleadingly divert consumers for commercial gain. The Respondent's deactivation of the website after the notification of Complaint is further telling that the Respondent lacks rights or legitimate interest in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
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 name, it purposefully chose the disputed domain name incorporating the trademarks of the Complainant and registered it 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 considered an 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 name. The Respondent takes advantage of the AEG trademark by intentionally attempting to attract visitors to the Respondent's website 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 name is currently inactive. However, the disputed domain name was previously connected to a Turkish website offering repair services for AEG products in Turkey. The website to which the disputed domain name resolved did not disclose the relationship with the trademark owner, i.e., the Complainant, and therefore, the Respondent does not meet the Oki Data principles, namely lack of a distinctive disclaimer and the Respondent can be regarded to corner the market preventing the Complainant from operating the disputed domain name and to represent itself as the trademark owner by displaying the Complainant's logo on the website.
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 name 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 name <aeg-servis-istanbul.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: October 28, 2015