WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Senol Karakaya

Case No. D2016-1386

1. The Parties

The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.

The Respondent is Senol Karakaya of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <istanbulelectroluxservis.com> is registered with IHS Telekom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2016, 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.

Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Turkish is the language of the registration agreement, on July 13 2016, the Center requested Parties to submit their comments on the language of the proceeding. On July 14, 2016, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.

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 the Respondent of the Complaint, and the proceeding commenced on July 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2016.

The Center appointed Dilek Üstün Ekdial as the sole panelist in this matter on August 16, 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 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 2014, the Complainant had sales of SEK 112 billion and about 60,000 employees.

The ELECTROLUX brand is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users.

The Complainant is the owner of the registered trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world including in Turkey.

It has been established in previous decisions that ELECTROLUX is considered a well-known trademark. The Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “electrolux”, for example, <electrolux.com> (created on April 30, 1996) and <electrolux.com.tr> (created on August 7, 1997). The Complainant uses these domain names to connect to websites through which it informs potential customers about its ELECTROLUX mark and its products and services.

The Respondent registered the disputed domain name on May 15, 2015.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the dominant part of the disputed domain name <istanbulelectroluxservis.com> comprises the term “electrolux”, which is confusingly similar as well as identical to the Complainant’s 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”, which has been included in the disputed domain name, is the Turkish word for “service”. Considering that the Complainant’s products on occasion will require technical assistance and repair services, the addition of said suffixes is intended to strengthen the impression that the disputed domain name is owned by or affiliated with the Complainant. The addition of the geographical term “Istanbul” does not add a distinctive element to the domain name and does not render it dissimilar to the trademark of the Complainant. It is well established that the addition of geographical terms to a trade mark does not prevent confusingly similarity.

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 name on May 15, 2015. 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, strongly suggesting that there is some official or authorized association with the Complainant. 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 paragraph 2.3 of 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 of the following reasons:

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 name.

The Respondent’s use of the disputed domain name is diverting traffic from the Complainant’s website, Complainant also notes that the Respondent has registered at least one other domain name incorporating a well-known brand, namely MIELE. For the purposes of the third element of the Policy, such pattern of abusive conduct shall be evidence bad faith registration. It is clear that the Respondent knows the domain name business and could easily have chosen a generic domain name not capitalizing on a well-known brand. A more suitable domain name would have been <senolteknikservis.com> or <senolteknikservis.com.tr> which is the name that Respondent is using in their email address and create a landing page for all brands which they offer repair services on.

The Complainant first tried to contact the Respondent on April 05, 2015 and April 21, 2016, 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

6.1. 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. The registration agreement for the disputed domain name is in Turkish language. However, the Respondent did not submit any comment regarding the language of the proceeding even though he was 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.

6.2. Substantive Issues

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 name is 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 name; and

(iii) that the disputed domain name has been registered and is being used in bad faith,

A. 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 domain names comprising its trademark ELECTROLUX under almost 700 gTLDs and ccTLDs worldwide, among these are <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., supra; 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 term “servis” does not sufficiently distinguish the disputed domain name 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 “Istanbul”, 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 name is 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.

B. 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 name. It is clear for this Panel that the Respondent has not demonstrated any bona fide offering of goods and services by its use of 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 meet 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 of the disputed domain name, when the Respondent registered the disputed domain name it knew that ELECTROLUX was the trademark of the Complainant, and that it registered the disputed domain name 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 name.

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

C. 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, when the Respondent registered the disputed domain name, it knew that the disputed domain name incorporated the trademark of the Complainant and registered it in order to take advantage of the strength of the trademark and gain commercial benefit from the notoriety of the Complainant’s 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 name is currently connected to a website in Turkish offering services for Electrolux products in Turkey. The website to which the disputed domain name resolves to does not include any disclosure as regards to the lack of a relationship between the Respondent and the trademark owner, i.e., the Complainant. Consequently, the Respondent is using the dispute domain name 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.

Moreover, the Respondent has registered at least one other domain name incorporating a well-known brand, namely MIELE. For the purposes of the third element of the Policy, such pattern of abusive conduct shall be further evidence of bad faith registration.

In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <istanbulelectroluxservis.com> be transferred to the Complainant.

Dilek Üstün Ekdial
Sole Panelist
Date: August 30, 2016