WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Westinghouse Electric Corporation v. IM Holding
Case No. D2018-0042
1. The Parties
The Complainant is Westinghouse Electric Corporation of New York, New York, United States of America, represented by Saba & Co. IP, Lebanon.
The Respondent is IM Holding of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <westinghouse-ueo.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2018. On January 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2018, 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.
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 proceedings commenced on January 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2018.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 28, 2018. 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 was founded in 1886 as Westinghouse Electric Company and later renamed to Westinghouse Electric Corporation.
The Complainant has registered the trademark WESTINGHOUSE alone and with a logo in many countries. The Complainant owns four trademark registrations for WESTINGHOUSE and WESTINGHOUSE-WHITE in Egypt covering classes 7, 9 and 11. Most of these registrations date back to the 1940s.
The Respondent registered the disputed domain name on April 5, 2009. The disputed domain name resolves to a website in Arabic, which seems to offer repair and maintenance services for various electrical products including products bearing the trademark WESTINGHOUSE.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns the trademark WESTINGHOUSE and has registered it in more than 180 countries including Egypt. It has also registered it as part of 200 domain names. The trademark WESTINGHOUSE is known and has been previously granted protection by various UDRP panels. The disputed domain name incorporates the trademark of the Complainant in its entirety which is sufficient to create confusion. The letters “ueo”, which are likely to be the acronym of the Respondent, create the impression of affiliation and do not eliminate confusion.
The Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence to show that it is using it in connection with a bona fide offering of goods or services, nor is the Respondent commonly known by the domain name nor is it making a legitimate noncommercial or fair use of it. On the contrary, the Respondent’s name bears no resemblance to the trademark WESTINGHOUSE and the Respondent has not been authorized by the Complainant to use the trademark. There has never been a business relation or an affiliation between the Complainant and the Respondent. Although the Respondent may be offering for sale goods bearing the trademark of the Complainant or offering repair services for such goods, the Respondent also offers services and goods with respect to brands other than the Complainant’s. Furthermore, the Respondent may not argue a bona fide offering of goods or servicesas the trademark of the Complainant existed for a very long time prior to the registration of the disputed domain name and the Respondent must have been aware of its existence.
The disputed domain name was registered and is being used in bad faith. The trademark of the Complainant has been registered and is recognized worldwide. The registration of the disputed domain name comes decades after the use of the trademark WESTINGHOUSE had started. Therefore, the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. Hence registration was made in bad faith. The trademark of the Complainant is used in its entirety in the disputed domain name in order to create the impression of affiliation or endorsement. The impression of association is further enhanced by the use of the Complainant’s logo. Such acts demonstrate bad faith use. Furthermore, the Respondent failed to respond to the Complainant’s warning letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant holds many trademark registrations for the trademark WESTINGHOUSE including registrations in Egypt. The Panel is satisfied that the Complainant has established its ownership of the trademark WESTINGHOUSE.
The disputed domain name comprises the Complainant’s trademark WESTINGHOUSE combined with the letters “ueo” which does not eliminate the confusing similarity with the trademark WESTINGHOUSE. Furthermore, “ueo” may be the acronym of the Respondent as the Respondent represents itself under the Arabic name المؤسسة الهندسية المتحدة , which can be translated to English as United Engineers Organization. Adding the acronyms of the entity of the Respondent does not eliminate confusion.
The generic Top-Level Domain “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In particular, the Panel notes that the Respondent claims, on its website, to be the agent of certain brands including that of the Complainant. As such, the Respondent appears to be creating the misleading impression that it is affiliated with the Complainant and is authorized by the latter. Moreover, the Complainant contends that the Respondent also offers services and goods with respect to brands other than the Complainant’s. Accordingly, the Panel does not find the use of the disputed domain name to be a bona fide offering of goods or services within the meaning of the Policy.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark WESTINGHOUSE is used in connection with a website which seems to offer repair and maintenance services for various electrical products including products bearing the trademark WESTINGHOUSE. Furthermore, the trademark WESTINGHOUSE has been in use for more than a century and is well known. Hence, it must be that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of attracting consumers to its website and with the intent of commercial gain, by creating the impression of being affiliated with the Complainant. In fact, the claim made by the Respondent on its website that it is the authorized agent only confirms the Respondent’s bad faith.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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, <westinghouse-ueo.com> be transferred to the Complainant.
Date: March 6, 2018