WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Domain Admin Domain Admin, Whoisprotection biz / Abdullah Murat Aslan
Case No. D2016-1355
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin Domain Admin, Whoisprotection biz / Abdullah Murat Aslan of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <servis-aeg.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 July 4, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2016 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 amendment to the Complaint on July 12, 2016.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Turkish is the language of the registration agreement, on July 12 2016, the Center requested Parties to submit their comments on the language of the proceeding. On July 12, 2016, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2016.
The Center appointed Dilek Üstün Ekdial as the sole panelist in this matter on August 16, 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 owns numerous AEG trademark registrations in the world, including the international trademark 149827A dated October 26, 1950 in classes 6, 7, 9, 10, 11, 12, 14, 16, 17, 19 and 21, as well as the Turkish trademark with application number 79/068047 in classes 7, 9 and 11 filed on June 23, 1979 and registered on December 31, 1979. 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 names to connect to a website through which it informs potential customers about its AEG mark and its products and services.
The disputed domain name <servis-aeg.com> was created on October 14, 2015 (as indicated by the Registrar and the public WhoIs record).
5. Parties’ Contentions
According to the Complainant, the disputed domain name <servis-aeg.com>, which was registered on October 14, 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, in addition to the trademark, only the generic word “servis”, which creates 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. 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 Complainant 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 states that it is the authorized repair service provider of the Complainant in Turkey (“AEG SERVISI”, which means AEG SERVICE in Turkish). 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 trademark 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 stipulate that they are not entitled to register domain names incorporating the Complainant’s trademark. The Respondent’s website layout – including a homemade AEG logo 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 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 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 February 16, 2015 through a cease-and-desist letter and then on February 29, 2015 with 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
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) is to ensure fairness in the selection of the language by giving full consideration to the parties’ level of comfort ability with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Complainant requested for English to be the language of the proceeding. The registration agreement for the disputed domain name is in Turkish language. However, the Respondent did not submit any comment regarding the language of the proceeding even though it was invited to do so in both Turkish and English. In addition, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have incurred substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case.
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., supra; 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 “servis” (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 meet the Oki Data requirements. The Panel finds that given the use of the disputed domain name to promote the Respondent’s repair services of the Complainant’s products without a clear disclosure stating that there is no relationship between the Complainant and the Respondent, 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 in order to misleadingly divert consumers to its website for commercial gain.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is met.
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 Complainant’s trademark for its own commercial benefit.
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 (See Policy, paragraph 4(b)(iv)).
The disputed domain name is connected to a website in Turkish, offering repair services for AEG products in Turkey. The website, to which the disputed domain name resolves, does not include any disclosure as regards to the lack of a relationship between the Respondent and 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 reviewed the website linked to the disputed domain name and found that the Respondent’s layout, including a homemade AEG logo on the top left side of the website, strongly suggests that there is a connection with the Complainant. The use of the Complainant’s trademark AEG in the disputed domain name and on the website strongly suggests that there is some official or authorized link with the Complainant for the purposes of repair services in Turkey.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <servis-aeg.com> be transferred to the Complainant.
Dilek Üstün Ekdial
Date: August 30, 2016