WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Gurbulak As, zafer gurbulak

Case No. D2013-1934

1. The Parties

The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Gurbulak As, zafer gurbulak of Ankara, Turkey.

2. The Domain Names and Registrar

The disputed domain names <electroluxservisankara.com>, <electroluxservisiankara.com> and <electroluxservisleriankara.com> are registered with Reg2C.com Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On November 28, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On November 29, 2013, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.

On November 28, 2013, the Center sent an email communication to the Complainant inviting it to identify the Registrar of the disputed domain name. The Complainant filed an amendment to the Complaint on November 29, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2013. On December 5, 2013, the Center informed the parties that, given the provided submissions and circumstances of this case, it had decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Turkish; 3) appoint a Panel familiar with both languages mentioned above, if available. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on January 7, 2013. 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 and registered as a Swedish company in 1919. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant is also one of the largest producers in the world of similar equipment for professional users. In addition, it is the market leader in many of individual product categories.

The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE. In 2008, Electrolux had sales of SEK 105 billion and 55,150 employees.

The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The Complainant’s Community trademark ELECTROLUX no. 000077925 was registered on September 16, 1998, which is before the registration of the disputed domain names on July 8, 2013. The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) worldwide.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the dominant part of the disputed domain names <electroluxservisleriankara.com>, <electroluxservisankara.com> and <electroluxservisiankara.com> comprises the word “electrolux”, which is confusingly similar as well as identical to the registered trademark ELECTROLUX, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world. The Complainant also states that the terms “servis” and “servisi”, which have been included in all disputed domain names, is the Turkish word for “service” and “services”. Considering that the Complainant’s products on occasion will require technical assistance and repair services, the addition of said suffixes is rather fitted to strengthen the impression the disputed domain names are owned or affiliated with the Complainant.

The Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark.

The Respondent registered the disputed domain names on July 8, 2013. The mere registration of a domain name does not give the owner a right or legitimate interest in respect of it.

The Complainant states that the Respondent is today not using the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names are currently connected to a website offering services for Electrolux products and the Respondent is misleading Internet users to a commercial website and consequently, the Respondent is tarnishing the trademark ELECTROLUX. The Respondent is trying to sponge off the Complainant’s world famous trademark.

The Complainant also adds that the Respondent does not qualify under the criteria laid down in the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and described in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Finally, the Complainant contends that the disputed domain names have been registered and are being used in bad faith by the Respondent because;

The disputed domain names are currently connected to a website offering services for Electrolux products; the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

It is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain names,

The Respondent’s use of the disputed domain names is diverting traffic from the Complainant’s website,

The Complainant first tried to contact the Respondent on September 9, 2013, through sending a cease and desist letter. No response was received.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the proceeding

According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) is to ensure fairness in the selection of the language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the Complainant requested for English to be the language of the proceeding. It is without question that the registration agreement for the disputed domain names is in Turkish language. However, the Respondent did not submit any commend regarding the language of the proceeding even though invited to do so in both Turkish and English. In addition, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have incurred substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case.

Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

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

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

(iii) that the disputed domain names have been registered and are being used in bad faith.

B. Identical or Confusingly Similar

The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the disputed domain name. The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these <electrolux.com.tr> (registered by Electrolux Turkey), <electrolux.com> and <electrolux.co.uk>.

The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

In this Panel’s view, the addition of the terms “ servis”, “servisleri” and “servisi” does not sufficiently distinguish the disputed domain names from the Complainant’s trademark. Also, the Panel concurs with the prior UDRP panels that the addition of a geographic term to a registered mark, in this case of “ankara", either alone or in conjunction with one another, is not sufficient to overcome a finding of confusing similarity between the disputed domain names and the Complainant’s mark. See WIPO Overview 2.0, paragraph 1.9.

Finally, the Respondent has brought no argument to contend that the disputed domain

names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. It is clear for this Panel that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. The Complainant showed, inter alia¸ that the Respondent has neither a license nor any other permission to use the disputed domain names and that use of the domain name did not fall under the Oki Data requirements. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use formerly made of the disputed domain names, when the Respondent registered the disputed domain names it knew that ELECTROLUX was the trademark of the Complainant, and that it registered the disputed domain names because it would be recognized as such.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case. Based on the circumstances, in the Panel’s view, it is reasonable to infer that when the Respondent registered the disputed domain names, it likely knew that the disputed domain names incorporated the trademark of the Complainant and registered them in order to take advantage of the strength of the trademark. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge may be considered, in appropriate cases, also an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

The disputed domain names are currently connected to a Turkish website offering services for Electrolux products in Turkey. The websites to which the disputed domain names resolve to do not accurately disclose their relationship with the trademark owner, i.e. the Complainant. Consequently, the Respondent is using the dispute domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.

In view of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith, in accordance with paragraph 4(a)(iii) 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 names <electroluxservisankara.com>, <electroluxservisiankara.com> and <electroluxservisleriankara.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: January 21, 2013