WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Petr Demidov
Case No. D2018-1984
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Petr Demidov of Urai, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <aeg-remont.xyz> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2018, 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 September 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed a request for English to be the language of the proceedings on September 5, 2018. The Complainant filed an amendment to the Complaint on September 19, 2018. The Respondent did not reply on the language of the proceedings by the date specified by the Center.
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 in English and Russian of the Complaint, and the proceedings commenced on September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. On September 20, 2018, the Respondent stated in an email communication in Russian that it did not understand the formal notification that was sent to it on the same date, although it was sent to it in English and Russian, and requested a Russian translation. The Respondent did not submit any formal response by the due date to do so. Accordingly, on October 11, 2018 the Center notified the Parties that it would proceed to Panel Appointment.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 16, 2018. 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 is a Swedish joint stock company founded in 1901. It is a global manufacturer of household appliances and appliances for professional use under different brands, one of which is AEG. In 2016, the Complainant had sales of SEK 121 billion and 55,000 employees. The history of AEG began in 1883, when it was founded as Deutsche Edison-Gesellschaft (DEG). It took the name AEG in 1887, and the Complainant acquired the rights to the brand AEG in 2005. The AEG brand is used by the Complainant for a variety of household products such as washing machines, refrigerators, dishwashers, ovens etc. and is now also a part of the Electrolux Global Brand Licensing program.
The Complainant is the owner of the international trademark AEG with registration No. 508107B, registered on November 28, 1986 for goods and services in International Classes 1, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 19, 20, 21, 35, 37, 41 and 42, registered for a number of jurisdictions including the Russian Federation (the “AEG trademark”).
The Complainant has registered and uses for its business the domain names <aeg.com>, registered on October 19, 1993 and <aeg.ru>, registered on July 2, 1998.
The disputed domain name was registered on December 5, 2017. It resolves to a Russian language website that offers repair services for various AEG products.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to the AEG trademark, as it entirely incorporates this trademark with the addition of the term “remont” which means “repair” in English, and the addition of the “.xyz” Top-Level Domain (“TLD”) does not add any distinctiveness to the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known as “aeg-remont”, is not affiliated to the Complainant, and the Complainant has not authorized the Respondent to use and/or register domain names incorporating the AEG trademark. The website at the disputed domain name indicates that it is AEG Repair Centre and offers post warranty services, but the Respondent is not an authorized distributor of the Complainant. The Complainant also refers to the requirements set out in the UDRP decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data decision”), and states that the Respondent does not comply with these requirements and its conduct cannot be considered as a bona fide use under the Policy, because the use of the AEG trademark on the Respondent’s website creates the misleading appearance that the Respondent has been authorized by the Complainant or is an approved provider or distributor of the Complainant’s products in the Russian Federation. The Complainant points out that prior to the filing of this Complaint it sent a cease and desist letter to the Respondent, requesting the cessation of use and the transfer of the disputed domain name to the Complainant, but no response to this letter was received.
The Complainant maintains that the disputed domain name was registered and is being used in bad faith. It was registered in many years after the Complainant’s AEG trademark was registered, and long time after it became well known. Together with the content of the website at the disputed domain name, this indicates that the Respondent was clearly aware of the Complainant’s business, services and products at the time of registration of the disputed domain name. The website at the disputed domain name features the official logo of AEG, which creates the deceptive appearance that it is an official AEG website for the Russian Federation and that the Respondent is an approved provider or repair center for the Complainant’s products in the same country, when in fact, it is not. According to the Complainant, this content is indicative of the efforts of the Respondent to trade off the goodwill of the Complainant’s trademark in order to divert Internet traffic to its website, and the Respondent is in violation of paragraph 4(b)(iv) of the Policy.
The Respondent did not submit any substantive reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Issue: Language of the Proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so within the time limit specified by the Center, and has thus not objected to the Complainant’s request the proceedings to be held in English. However, following the notification of the Complaint, the Respondent has requested a Russian translation of the documents in the case. The Panel does not regard this conduct of the Respondent as consistent and contributing to the efficiency of the proceeding, and accepts that the Respondent would not be disadvantaged if the language of the proceeding is English and all evidence in the case file available in English or Russian languages is taken into account.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.2. Substantive Matters
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”.
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the AEG trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the TLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.xyz” TLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the combination “aeg-remont”. It consists of the elements “aeg” and “remont” separated by a hyphen. The “aeg” element is identical to the AEG trademark, while the “remont” element is a Russian word which is translated in English as “repair”. This combination is likely to appear to Russian speaking Internet users as referring to an online location that provides repair services for the Complainant’s AEG products. Moreover, the addition of the descriptive term “remont” to the Complainant’s trademark does not prevent a finding of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the AEG trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and has not been authorized by the Complainant to register and use domain names incorporating the AEG trademark, that the Respondent is not commonly known by the disputed domain name, and that it is not an authorized distributor of the Complainant. Rather, the Respondent has used the disputed domain name in relation to a website which indicates that it is an “AEG Repair Centre” and offers post warranty services, without the Respondent being an authorized distributor of the Complainant. The Complainant further submits that the Respondent’s conduct does not comply with the requirements set out in the UDRP decision in the Oki Data decision. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. It did not responded to the Complainant’s cease and desist letter either.
The disputed domain name incorporates the AEG trademark entirely with the addition of a Russian word that means “repair” in English. This makes it likely that Russian speaking Internet users may regard the disputed domain name as being an official online location offering repair services for the Complainant’s AEG products. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that indeed offers repair services for the Complainant’s products, features the official AEG logo of the Complainant and does not include a disclaimer of any affiliation to the Complainant.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant’s AEG trademark, is likely to have registered and used the disputed domain name in an attempt to exploit this goodwill to attract the attention of Russian-speaking Internet users and to mislead them that the disputed domain name and the associated website represent an official online location approved by the Complainant to offer repair services for its products, without disclosing the lack of any partnership with the Complainant. In the Panel’s view, such conduct does not comply with the criteria set out in the Oki Data decision and does not appear to be legitimate and giving rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the AEG trademark and is confusingly similar to it. The Respondent does not deny that the disputed domain name is linked to a website that offers repair services for the Complainant’s products, prominently features the AEG logo, and does not contain a disclaimer for the lack of affiliation to the Complainant.
In view of the above, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the AEG trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant. The website at the disputed domain name may further confuse Internet users that they are offered authorized repair services for the Complainant’s AEG products from an official online location approved by. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s AEG trademark as to the endorsement by the Complainant of the Respondent’s website and of the services offered through it.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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-remont.xyz> be transferred to the Complainant.
Date: November 9, 2018