WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Hamid Reza Nadi Moghaddam, MYSK Co
Case No. DIR2016-0006
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Hamid Reza Nadi Moghaddam, MYSK Co of Birjand, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <aeg-powertools.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2016. On February 12, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 13, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 22, 2016.
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 the Respondent of the Complaint, and the proceedings commenced on February 23, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2016. On February 23, 2016 and March 3, 2016, the Respondent filed email communications with the Center. On March 15, 2016, the Center notified the Parties of the commencement of the Panel appointment process.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on March 22, 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 one of the world's largest producers of inter alia appliances and kitchen equipment.
The Complainant holds numerous worldwide trademark registrations for AEG, including in the Islamic Republic of Iran, such as the International Trademark Registration no. 802 025 (registered 2002). AEG was founded 1887 in Germany and is a producer of electrical engineering in consumer products.
The disputed domain name was registered by the Respondent on June 19, 2014. The disputed domain name is currently inactive.
5. Parties' Contentions
In summary, the Complainant contends the following:
The disputed domain name incorporates the Complainant's well-known registered trademark AEG. This makes the disputed domain name confusingly similar to the Complainant's trademark.
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 and services.
The Respondent intentionally chose the disputed domain name based on a registered and well-known trademark in order to generate more traffic to its own website. Nowhere does the Respondent disclaim the non-existing relationship between him and the Complainant.
The Respondent submitted emails to the Center on February 23, 2016 and March 3, 2016, explaining that the "site is under construction" and that he had registered the disputed domain name to expand the AEG power tools brand in the Islamic Republic of Iran.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is comprised of the Complainant's trademark AEG and the suffix "powertools". UDRP1 panels have consistently held that the addition of merely generic or descriptive terms to a trademark in a domain name would typically be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). Considering that the Complainant is active in the global electrical engineering business, the addition of the generic term "power tools" to the Complainant's
well-known trademark is insufficient to prevent a finding of confusing similarity. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. In this regard the Panel notes that the Respondent registered the disputed domain name on June 19, 2014 and that it has not submitted any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided evidence that he had registered the disputed domain name to expand the AEG power tools brand.
Based on the Complainant's contentions, the Panel finds that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
UDRP panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity (WIPO Overview 2.0, paragraph 3.2).
The Respondent was evidently aware of the Complainant's trademark when he registered the disputed domain name and indicated in his emails to the Center that the corresponding website was under construction and would be used to "expand [the] AEG power tools brand in Iran". Under these circumstances, noting again the Panel's conclusion under Section 6B, the Panel finds that the Respondent's conduct constitutes bad faith registration and use in the sense of paragraph 4(b)(iv) of the Policy.
The Complainant has thus also fulfilled 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 <aeg-powertools.ir> be transferred to the Complainant.
Date: April 5, 2016a
1While the Complaint is brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy ("UDRP"), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.