WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Levent Ustun

Case No. D2020-0583

1. The Parties

Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.

Respondent is Levent Ustun, Turkey.

2. The Domain Name and Registrar

The disputed domain name <ist-aegservisi.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on April 14, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 21, 2020. 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

Complainant is a Swedish producer of appliances and equipment for kitchen and cleaning products and floor care products that was established in 1901 and now operates with 55,000 employees globally. In 2005, Complainant acquired rights to the AEG brand, which was established in Germany in 1887. AEG is used for various household appliances including refrigerators, dishwashers, and ovens. Complainant operates in Turkey through a local Electrolux entity.

Complainant is the proprietor of trademark registrations for AEG (the “AEG Mark”) in numerous jurisdictions, including the following:

- International Registration No. 149827A for AEG (device mark) registered on October 26, 1950, for goods in classes 6, 7, 9, 10, 11, 12, 14, 16, 17, 19, 20, and 21;

- International Registration No. 802025 for AEG (word mark) registered on December 18, 2002, designating countries including Turkey, for goods in classes 7, 8, 9, 10, 11, and 17;

- International Registration No. 802994B for AEG PERFECT IN FORM AND FUNCTION (word mark) registered on January 16, 2003, designating countries including Turkey, for goods and services in classes 7, 9, 10, 11, and 37;

- Turkish Registration No. 125521 for AEG (device mark) registered on May 27, 1991 for goods in classes 6, 7, 9, 10, 11, 12, 14, 16, and 17.

Complainant has registered a number of domain names incorporating the AEG Mark. It operates a global English-language website at “www.aeg.com” and a website for the Turkish market at “www.aeg.com.tr”.

The disputed domain name was registered on September 18, 2019. The disputed domain name resolves to a website in the Turkish language offering repair services for AEG products.

The record contains a cease and desist letter dated January 23, 2020, by Complainant to Respondent. The record does not contain any response thereto.

5. Parties’ Contentions

A. Complainant

Under the first element, Complainant states that the disputed domain name directly and entirely incorporates Complainant’s registered AEG Mark. Further, the addition of generic words (in this case the Turkish word “servisi”, which means “service” in English), geographic indicators (in this case “ist” for Istanbul), dashes or generic Top-Level Domains (“gTLDs”) (in this case “.com”) does not add any distinctiveness to the disputed domain name. Therefore, the disputed domain name is identical or confusingly similar to Complainant’s Mark.

Under the second element, Complainant states that there is no evidence Respondent is commonly known by the disputed domain name and there is no evidence that Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services. It is clear that the intention of the disputed domain name registration is to take advantage of the Internet traffic generated due to the incorporation of the AEG Mark in the disputed domain name. By using Complainant’s AEG Mark in the disputed domain name and on its website, Respondent holds itself out as being an authorized or non‑authorized provider of services for the maintenance of Complainant’s products. There is no contractual relationship between Complainant and Respondent. However, Respondent does not satisfy the conditions set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), whereby use of a trademark in a domain name by a third party would constitute a bona fide offering of goods and services. In particular, Respondent has failed to publish a disclaimer on its website of the disputed domain name; Respondent is depriving Complainant of reflecting its own AEG Mark in the disputed domain name, and Respondent presents itself as the trademark owner by using Complainant’s AEG Mark and logo on its website.

Under the third element, Complainant states that that its trademark registrations predate the registration of the disputed domain name and therefore it seems highly unlikely that Respondent was unaware of the existence of the trademark. Respondent has failed to respond to communications by Complainant regarding the unauthorized use of Complainant’s Mark. Respondent has never been granted permission to register the disputed domain name. Respondent takes advantage of Complainant’s AEG Mark by intentionally attempting to attract visitors to Respondent’s website. The disputed domain name is used to offer repair services for AEG products but said use does not meet the Oki Data principles.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the AEG Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s AEG Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the AEG Mark. The disputed domain name contains the AEG Mark in its entirety. The addition of the geographical and dictionary terms “ist” for Istanbul and “servisi” for “service” does not prevent a finding of confusing similarity.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

Section 1.8 of WIPO Overview 3.0 provides: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

It is the well-established view of UDRP panels that the addition of the gTLD to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the AEG Mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist. Regarding Respondent’s use of Complainant’s AEG Mark in the disputed domain name to indicate a bona fide offering of goods and services in relation to sales or repairs of Complainant’s goods, the Panel finds that the four cumulative requirements of the Oki Data test (as described in the WIPO Overview 3.0, section 2.8.1) are not satisfied. In particular, Respondent has failed to disclose its relationship with the right holder.

The Panel finds that the evidence submitted by Complainant therefore establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith under Policy, paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the AEG Mark predate by many years the registration of the disputed domain name. The disputed domain name contains Complainant’s AEG Mark in its entirety, with the addition of geographical and dictionary terms indicating that Respondent is servicing Complainant’s products in Istanbul, but, as discussed above, lacking the required indicia of right or legitimate interests. The Panel finds that such a registration creates a presumption of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website that includes Complainant’s AEG Mark and logo while failing to provide a clear and prominent disclaimer to avoid unfairly passing itself off as related to Complainant. See WIPO Overview 3.0, section 3.7.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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 <ist-aegservisi.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: May 5, 2020