WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Electrolux v. Homan Motevasel

Case No. DIR2018-0019

1. The Parties

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

The Respondent is Homan Motevasel of Tehran, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <aegco.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2018. On December 13, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 15, 2018, 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 January 2, 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2019. On January 25, 2019, the Center notified the Respondent’s default.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on February 5, 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

The Complainant is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products.

The Complainant owns numerous trademarks on a worldwide basis consisting of the acronym AEG (standing for Allgemeine Elektrizitäts-Gesellschaft), including in the Islamic Republic of Iran where the Respondent is located; such as International trademark No. 802025 which was registered on December 18, 2002, under classes 7, 8, 9, 10, 11, and 17.

The Complainant also owns several domain names to carry out its online activities consisting of that acronym, including <aeg.com>, since October 19, 1993.

Prior panels have already ruled in favor of the Complainant with regards to the incorporation of its AEG trademark in domain names (such as AB Electrolux v. Hamid Reza Nadi Moghaddam, MYSK Co, WIPO Case No. DIR2016-0006; AB Electrolux v. Paliz Co., Network Supporters Co.Ltd, WIPO Case No. D2009-1225).

The disputed domain name <aegco.ir> was registered on June 26, 2014. The disputed domain name links to a website prominently displaying the Complainant’s trademark and official logo AEG combined with the use of the copyright symbol at the bottom of the page. Further, the Respondent is using the disputed domain name to offer services and information about AEG phones of the Complainant’s brand (displaying not only the AEG logo, but also the photographs of official AEG phones), expressly stating that “the official website of this brand is ‘www.aegtelephones.eu’”. Furthermore, the website states that it “is under the supervision and ownership of the exclusive sales and service of AEG phones in Iran”.

On January 17, 2017, the Complainant sent to the Respondent a cease and desist letter, in which it drew the Respondent’s attention to its trademark rights in the acronym AEG and invited him to transfer the disputed domain name <aegco.ir> to the Complainant within seven days. Notwithstanding two reminders sent by email to the Respondent, he did not respond.

5. Parties’ Contentions

A. Complainant

The Complainant first argues that the disputed domain name <aegco.ir> is confusingly similar to its AEG trademark, since it entirely incorporates the trademark with the addition of a descriptive term “co” that will easily be understood as referring to “company”.

The Complainant then affirms that the Respondent does not own any rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent is not commonly known under disputed domain name, has not been authorized by the Complainant to use the AEG trademark and does not offer any actual bona fide offering of goods and services. Rather, the Complainant argues that the disputed domain name resolves to a website that reproduces the AEG stylized logo and which offers services and information about AEG phones of the Complainant’s brand, including photographs of genuine Complainant’s phones).

The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

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

(iii) the disputed domain name has been registered or is being used in bad faith.

While the Complaint is brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two under the exception of the third requirement, where it is enough for the Complainant to demonstrate that the disputed domain has either been registered or used in bad faith, the Panel considers UDRP precedent relevant to the current proceedings.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant holds several trademarks in jurisdictions throughout the world consisting of the acronym AEG, including in the Islamic Republic of Iran where the Respondent is located.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see section1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Such happens to be the case here.

The applicable country-code Top-Level Domain (“ccTLD”), in the present case “.ir”, is usually disregarded under the confusing similarity test and the addition of merely descriptive terms such as the term “co” – that will easily be understood as referring to the word “company” – does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent WIPO UDRP panels have acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, section 2.1 of WIPO Overview 3.0).

In the present case, the Complainant is the owner of numerous AEG trademarks that enjoy a strong reputation in its sector industry, including in the Islamic Republic of Iran where the Respondent is located. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. ¹

Absent any Response, the Respondent did not rebut this prima facie showing.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

C. Registered or Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered or is being used in bad faith (Policy, paragraph 4(a)(iii)).

Considering the content of the website at the disputed domain name reproducing the Complainant’s logo, the Respondent was obviously aware of the Complainant’s trademarks at the time of registration of the disputed domain name. Based upon the overall circumstances of the case and the content of the website at the disputed domain name as referred to above, the Panel has no doubt that it was registered by the Respondent to exploit the Complainant’s goodwill and attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as described under paragraph 4(b)(iv) of the Policy.

It is clear that the website at the disputed domain name is being used in order to pass off as an official website of the Complainant by the prominent use of the Complainant’s trademark, as well as the reference that “website is under the supervision and ownership of the exclusive sales and service of AEG phones in Iran”.

Consequently, the Panel is of the opinion that the disputed domain name <aegco.ir> has been registered and is being used in bad faith under the 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 name <aegco.ir> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Date: March 4, 2019