WiIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Majid Mahmoodi
Case No. DIR2018-0018
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Majid Mahmoodi of Tehran, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <aegserviceco.ir> (the “Domain Name”) is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2018. On November 27, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On November 28, 2018, 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 February 20, 2019.
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 February 21, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2019. On March 14, 2019, the Center notified Respondent’s default.
The Center appointed Gregor Vos as the sole panelist in this matter on March 20, 2019. 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 joint stock company founded in 1901 that produces, amongst other things, kitchen appliances and equipment and cleaning products and floor care products.
Complainant is the owner of the following trademark registration (the “Trademark”):
- International trademark registration No. 802 025, for the wordmark AEG, registered in December 18, 2002.
Complainant is also the owner of numerous domain names that incorporate the Trademark, including <aeg.com>.
The Domain Name <aegserviceco.ir> was registered by Respondent on November 26, 2017. It currently resolves to a website that displays the letters AEG in prominent form on a page on which it offers repair services for AEG products.
5. Parties’ Contentions
Complainant asserts that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the Trademark in its entirety with the addition of the generic terms “service” and “co”. According to Complainant, the generic terms “service” and “co” for the purposes of repairs and services would not prevent a finding of confusing similarity with the well-known Trademark.
Furthermore, Complainant asserts that Respondent has no rights to or legitimate interests in respect of the Domain Name. Complainant asserts that Respondent is not commonly known by the Domain Name. Furthermore, there would be no evidence that the Domain Name has been used, or will be used in the future, in connection with a bona fide offering of goods or services. In this regard, Complainant states that Respondent’s use of the Domain Name would not satisfy the test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test” (see below)). According to Complainant, Respondent’s use of the Domain name would create an impression that it is an official partner of Complainant.
Finally, Complainant asserts that the Domain Name has been registered in bad faith. The Domain Name was registered more than a century after Complainant started to use the Trademark. Therefore, it would be implausible that Respondent was unaware of the unlawfulness of the registration of the Domain Name. Complainant also submits that the Domain Name is being used in bad faith. Respondent’s failure to respond to a cease and desist letter would be an indication of such bad faith use of the Domain Name, as well the fact that Respondent would have been using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of its website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Based on paragraph 4(a) of the irDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
In the administrative proceedings, Complainant must prove that each of these three elements is present. Only if all three elements are fulfilled can the Panel grant the remedy requested by Complainant.
A. Identical or confusingly similar
Paragraph 4(a)(i) of the irDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the irDRP, it is noted that Complainant is registered as the owner of the Trademark, as can be seen from the submitted copies of the registrations of the Trademark. Consequently, the Panel finds that Complainant has proven that it has rights in the Trademark.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademark, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant's trademark and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
It is well established that in making an enquiry as to whether a Trademark is identical or confusingly similar to a Domain Name, the country code Top-Level Domain (“ccTLD”) “.ir” may be disregarded (see AB Electrolux v. Vahab Hashemi Gavgani, WIPO Case No. DIR2017-0005; Compagnie Génerale des Etablissements Michelin v. Saeed Karimi, WIPO Case No. DIR2011-0001 and Kaspersky Lab Zao v. BaniSaz Co., WIPO Case No. DIR2010-0004). This case does not contain any indications to the contrary.
The Domain Name incorporates the Trademark entirely. Additionally, the Domain Name contains the terms “service” and “co”. However, a minor variation, such as adding a generic term to a trademark, usually does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview 3.0). Here, the Panel finds that the addition of the terms “service” and “co” to the Trademark in the Domain Name is not sufficient to avoid a finding of confusing similarity. The term “service” refers to the services provided and the term “co” will be easily understood as referring to the word “company”. The Trademark remains recognizable within the Domain Name (see National Westminster Bank plc v. Steve Mart, WIPO Case No. D2012-1711; Tommy Bahama Group, Inc. v. Berno Group International, WIPO Case No. D2012-0531; National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case No. D2012‑0075; Space Needle LLC v. Erik Olson, WIPO Case No. D2011-0931; Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the irDRP is fulfilled.
B. Rights or Legitimate Interests
In order to fulfil the requirement of paragraph 4(a)(ii) of the irDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant argues that the use of the Trademark strongly suggests that there is some official or authorized link with Complainant for the purposes of repairs and services within the Islamic Republic of Iran. Respondent is not affiliated with Complainant. It has also not been authorized by Complainant to register or use the Domain Name or to seek the registration of any Domain Name incorporating the Trademark or a mark similar to the Trademark. According to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a trademark in a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) if the following conditions are satisfied:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the use of the Trademark cannot be regarded as a bona fide offering of goods or services. Respondent has failed to accurately disclose its relationship with Complainant. The website displays the Trademark multiple times and it falsely suggests that it is administered by one of Complainant’s sales agents, which is contrary to the third condition as stated above. Since not all the conditions of the test are met, the use of the Trademark by Respondent cannot be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i).
Moreover, there is no evidence that Respondent is commonly known by the Domain Name or any similar name, nor that Respondent has made a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(ii) of the Policy.
Based on the above, the Panel finds that Complainant has sufficiently set out its prima facie case.
Consequently, the Panel finds that the requirement under paragraph 4(a)(ii) of the irDRP is fulfilled.
C. Registered or Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the irDRP, the circumstances in paragraph 4(b) of the irDRP, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of the Domain Name in bad faith. One of these circumstances is:
“by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.”.
Considering the fact that the website under the Domain Name reproduces Complainant’s logo and the Trademark, the Panel finds that Respondent must have been aware of the Trademark at the time of registration of the Domain Name.
Based upon the overall circumstances of the case and the content of the website under the Domain Name as referred to above, the Panel has no doubt that it was registered by Respondent to exploit Complainant’s goodwill and attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Trademark as described under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the irDRP is fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aegserviceco.ir> be transferred to Complainant.
Date: April 3, 2019