WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. mehmet sagdic -(171863), firtina tasarim
Case No. D2016-0451
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is mehmet sagdic (171863), firtina tasarim of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <aegservisi.com> is registered with Reg2C.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2016, 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. Further to the Center’s communication regarding the language of the proceeding (transmitted in both Turkish and English), the Complainant submitted its request for English to be the language of the proceeding on March 11, 2016. The Respondent submitted no comments regarding the language of the proceeding, despite the invitation to do so.
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 (in Turkish and English) of the Complaint, and the proceedings commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2016.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on April 20, 2016. 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 kitchens, as well as cleaning products and floor care products. Having started out with the sale of a single vacuum cleaner, after 90 years of innovation 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 multi-talented German designer Peter Behrens. Initially founded in 1883 as Deutsche Edison-Gesellschaft (DEG), the company took the name AEG in 1887.
The Complainant’s AEG trademark registrations predate the registration of the disputed domain name. Due to extensive use, advertising, and revenue associated with its AEG 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 (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) containing the term “aeg”, for example <aeg.com> (created on October 19, 1993) and <aeg.com.tr> (created on August 7, 1997). The Complainant uses these domain name to connect to a website through which it informs potential customers about its AEG mark and its products and services.
The disputed domain name <aegservisi.com> was created on May 2, 2007 (as indicated by the Registrar and the public WhoIs record). The disputed domain name is currently passively held, and the Complainant has submitted evidence that it formerly resolved to a website in the Turkish language appearing to offer repair services for AEG appliances.
5. Parties’ Contentions
According to the Complainant, the disputed domain name <aegservisi.com>, which was registered on May 2, 2007, 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 generic Top Level Domain (gTLD) “.com” does not detract from the confusingly similar nature of the disputed domain name.
Further, the disputed domain name contains, in addition to the trademark, only the generic word “servisi”, which exaggerates the impression that the Respondent is somehow affiliated with the Complainant, and that 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 trademark.
The Complainant has not found that the Respondent is commonly known by the disputed domain name. The WhoIs information listing “mehmet sagdic -(171863)” as registrant is the only evidence in the WhoIs record which relates the Respondent to the disputed domain name. The Respondent has not by virtue of the content of the website, nor by its use of the disputed domain name, shown that it will be used in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. It is clear that AEG has become a distinctive identifier associated with the Complaianant and that the intention of the disputed domain name is to take advantage of an association with the business of the Complainant.
According to the Complainant; the Respondent is using the disputed domain name to attract Internet users to its Turkish-language website where the Respondent state that it is “AEG TEKNIK SERVIS” (AEG TECHNICAL SERVICE in English). A common misunderstanding among authorized or non-authorized repair centers is that they are of the impression that they can freely register domain names incorporating the trademarked name of the products they are offering services on. The Complainant stated that it has a clear agreement with all its authorized partners that this practice is strictly forbidden. The agreements that are signed between the Complainant and its licensees / distributors clearly stipulates that they are not entitled to register domain names incorporating the Complainant’s trademark. The Respondent’s website layout – including a homemade black and white AEG logo coupled with the Turkish words of “Teknik servis” (in English “Technical Service”) appearing prominently on the top left of the website – strongly suggests that there is a connection with the Complainant. The use of the mark AEG in the disputed domain name and on the website several times strongly suggest 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 as having rights or legitimate interests in the disputed domain name 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 September 17, 2015 and September 30, 2015, through a cease and desist letter and a reminder. 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 to the Complainant’s request of English as the language of the proceeding, 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 is 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 trademarks were 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 (as is the case here) 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 name from the Complainant’s trademarks.
Finally, the Respondent, who is in default, has brought forward 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 in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Respondent has not provided any evidence of the types specified in paragraph 4(c) of the Policy, nor of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear to 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 Complaint filing is further telling evidence that the Respondent recognizes that it lacks rights or legitimate interests in the disputed domain name.
Accordingly, 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 trademark of the Complainant and registered it in order to take advantage of the strength of the trademark.
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 registration in 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 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. Policy, paragaraph 4(b)(iv).
The Panel notes that the disputed domain name is currently inactive. However, the disputed domain name was previously connected to Turkish website offering repair services for AEG products in Turkey. The website to which the disputed domain name resolved did not accurately disclose their relationship with the trademark owner, i.e., the Complainant (which, as referenced above, takes it out of the oki data safe harbor for purposes of the second element).
The Panel searched the disputed domain name on “www.archive.org” and found that the Respondent’s layout, including a homemade black and white AEG logo coupled with the Turkish words “Teknik servis” (in English “Technical Service”) appeared prominently on the top left of the website and strongly suggested that there is a connection with the Complainant. The use of the word AEG in the disputed domain name and on the website several times strongly suggest that there is some official or authorized link with the Complainant for the purposes of repairs and services within Turkey.
In these circusmtances the current passive holding of the disputed domain name does not prevent a finding of bad faith use.
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 name, <aegservisi.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: May 4, 2016