WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Mohammad Aghakhani
Case No. DIR2014-0008
1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Mohammad Aghakhani of Tehran, Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
The disputed domain name <aegcenter.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2014. On December 1, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 2, 2014, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on December 3, 2014.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2015. The Response was filed with the Center on January 6, 2015.
The Center appointed Stephanie Hartung as the sole panelist in this matter on January 20, 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
Complainant is a joint stock company with legal domicile in Sweden established in 1901 and is one of the leading producers of home appliances and appliances for professional use worldwide.
Complainant is the owner of numerous brands including AEG, AEG-ELEKTROLUX, ELEKTROLUX and ZANUSSI.
Complainant has provided evidence that it has registered the AEG brand as word and device marks in many countries all over the world, including in Iran where Respondent apparently is located: Word Mark AEG, Iranian Registration Office of Companies and Industrial Property, Registration No. 7944, Status: Active.
The disputed domain name was registered no later than April 29, 2013. It redirects to a website at "www.aegcenter.ir" which apparently is set up in the Persian language and offers a variety of Complainant's AEG products for sale.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties' Contentions
Complainant asserts that it is selling more than 50 million products to customers in 150 countries every year and that its AEG trademark has meanwhile acquired the status of a well-known trademark due to its extensive and long-term use on Complainant's products and for its services.
Complainant suggests that the disputed domain name is at least confusingly similar to Complainant's AEG trademark since the addition of the generic term "center" does not detract from the overall impression of the dominant part of the disputed domain name, AEG, which is instantly recognizable as Complainant's world-famous trademark.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent apparently has no registered trademarks or trade names corresponding to the disputed domain name, (2) Respondent is not an authorized dealer of Complainant's products and has never had a business relationship with Complainant, nor has Complainant ever given Respondent any license or authorization of any other kind to use the AEG trademark, and (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since Respondent's website to which the disputed domain name redirects does not disclose that there is no business relationship between the parties, but rather states: "All rights reserved Aag Center (Center Aag) Reserved".
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since (1) it is clear from past Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings (e.g. Aktiebolaget Electrolux v. Mohammad Aghakhani, WIPO Case No. D2012-1920) that Respondent was aware of Complainant's rights in the AEG trademark at the time of the registration of the disputed domain name, (2) Respondent did not accept Complainant's request to voluntarily transfer the disputed domain name but in turn requested that Complainant gave Respondent an e-commerce license or buy the disputed domain name from him and, finally, (3) given the redirection of the disputed domain name to Respondent's unauthorized website offering Complainant's AEG products, Respondent apparently is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant's AEG trademark as to the source, sponsorship, affiliation or endorsement of his website.
Respondent contends that he has set up his online-store websites to introduce the best home appliance brands in Iran and to inform buyers about those products from a variety of world top brands, such as BOSCH, MONILEX, TOSHIBA, etc. Respondent claims that he has about 5,000 customers around Iran, the number of which is still increasing.
Respondent points to the fact that he did not register any domain names in order to sell them to brand owners, but because companies such as Complainant have the weakest advertising in Iran, therefore customers cannot identify and select the correct representatives in warranty cases, etc.
Respondent emphasizes that the website "www.aegcenter.ir" displays no products except those under the AEG brand and that no advertisement is made to any third party's goods.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <aegcenter.ir> is confusingly similar to the AEG trademark in which Complainant has shown itself to have rights.
The disputed domain name incorporates the AEG trademark in its entirety. It has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9) that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.1 Accordingly, the mere addition of the generic term "center" is not capable of dispelling the confusing similarity arising from the incorporation of Complainant's AEG trademark in the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of the parties' own contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use without intent for commercial gain.
It is undisputed between the parties that the disputed domain name redirects to a website at "www.aegcenter.ir" which offers a variety of Complainant's products for sale, but which does not contain any kind of a disclaimer disclosing the parties' relationship, namely that Respondent is not an authorized dealer or representative of Complainant in Iran. Rather, to the contrary, the website under the disputed domain name apparently states: "All rights reserved Aag Center (Center Aag) Reserved". Again, Respondent has not denied that this is the case.
Against this background, the Panel agrees with Complainant's line of argumentation that the prerequisites for a bona fide offering of goods as set forth by the so-called "OKI Data Principles" (see WIPO Overview 2.0 paragraph 2.3; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) in the case at hand are not fulfilled as they require that the website under the disputed domain name accurately and prominently discloses the registrant's relationship with the trademark holder.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence to the contrary (see WIPO Overview 2.0, paragraph 2.1). Respondent, however, has not offered any suggestion as to why he should be entitled to using Complainant's well-known AEG trademark as a domain name in the current circumstances.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered or Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
On the basis of Respondent's own contentions, there can be no reasonable doubt that Respondent had knowledge of Complainant's famous AEG trademark and, therefore, Complainant's rights therein at the time of the registration of the disputed domain name. Moreover, Respondent himself argues that Complainant had the weakest advertising in Iran and that, therefore, Respondent decided to set up his own website to introduce Complainant's products on the Iranian market and to inform buyers thereof. Therefore, given the confusing similarity of the disputed domain name with Complainant's famous trademark and in light of the fact that Respondent has failed to demonstrate any rights or legitimate interests with respect to the disputed domain name, the Panel comes to the conclusion that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant's AEG trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under 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 <aegcenter.ir> be transferred to Complainant.
Date: January 26, 2015
1 While the Complaint is brought under the Policy, and not the UDRP, given the textual similarities between the two, the Panel considers the views recorded in the WIPO Overview and UDRP precedent relevant to the current proceedings, and will refer to these throughout.