WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Domain Admin, Whoisprotection.biz / Murat Cayiroglu

Case No. D2014-2134

1. The Parties

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

The Respondent is Domain Admin, Whoisprotection.biz of Istanbul, Turkey / Murat Cayiroglu of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <electroluxteknikservisimiz.com> is registered with FBS Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2014. On December 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 11, 2014.

On December 11, 2014, the Center sent the language of the proceeding communication in both English and Turkish. The Complainant requested English to be the language. The Respondent did not submit its comments.

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 in English and in Turkish, and the proceedings commenced on December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2015. The Center received an informal pre‑commencement communication from the Respondent on December 11, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on January 7, 2015.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 23, 2015. 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 in this administrative proceeding, Aktiebolaget Electrolux, was founded in 1901 and registered as a company in 1919 in Sweden, and it produces appliances and equipment for kitchen and cleaning.

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 Turkey as of December 31, 1993 (registration no. 78814).

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 registration of these domain names predates the registration of the disputed domain name.

The disputed domain name was registered on May 19, 2014. The Panel visited the website at the disputed domain name on February 6, 2015, and observed that the disputed domain name is inactive.

5. Parties' Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant asserts that the disputed domain name comprises the word "electrolux" which is identical to its registered trademark ELECTROLUX. The Complainant states that the fame of ELECTROLUX has been confirmed in previous UDRP decisions. Moreover, the Complainant asserts that the addition of "teknikservisimiz", meaning "our technical service" in English, does not have an impact on the overall impression of the dominant part of the disputed domain name, ELECTROLUX.

The Complainant further asserts that the addition of a gTLD, in this case ".com", is irrelevant for the assessment of confusing similarity between a trademark and a domain name.

Rights or Legitimate Interests

The Complainant asserts that the Respondent does not have any registered trademarks or trade names that correspond to the disputed domain name, nor is the Respondent a licensee of the Complainant. The Complainant has not given the Respondent any permission to register its trademark as a domain name.

Further, the Complainant asserts that the Respondent is not an authorized dealer of its products, and has no business relationship with it, a factor that establishes an absence of a right or legitimate interest on the part of the Respondent. Therefore, the Respondent is in no way authorized to use the Complainant's ELECTROLUX trademark in the disputed domain name, nor to market services bearing the said trademark, or to represent the Complainant, or to act on its behalf.

The Complainant, asserts that there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further asserts that it has been successful in numerous UDRP cases in relation to unrelated websites that incorporate the ELECTROLUX trademark selling and offering services for Electrolux products, for instance in Aktiebolaget Electrolux v. PrivacyProtect.org / Gokhan KAZAK, WIPO Case No. D2012-0987; Aktiebolaget Electrolux v. Yalcin Senturk, WIPO Case No. D2012-0742. The Complainant points out that in the first mentioned WIPO Case No. D2012-0987, under similar circumstances, the panel concluded that such use could not be considered bona fide use. According to the Complainant, the Respondent is attempting to "sponge off" the Complainant's world famous ELECTROLUX trademark.

Further, the Complainant submits that the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant asserts that the Respondent does not adequately disclose the non-existence of any relationship between the Respondent and the Complainant, nor are there any visible disclaimers that the website is not endorsed or sponsored by the Complainant in spite of using ELECTROLUX logo and mark. This further enhances the false impression that there is a connection between the Respondent and the Complainant.

The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends that the trademark ELECTROLUX is a well-known and reputed mark throughout the world. The Complainant asserts that the Complainant tried to contact the Respondent on September 22, 2014 through a cease and desist letter sent by email to request a voluntary transfer of the disputed domain name. However, the Respondent did not reply to the Complainant's cease and desist letter.

The Complainant asserts that the disputed domain name is registered for commercial gain to create 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. The Complainant further contends that being aware of the Complainant's trademark and creating confusion that the Respondent is an authorized dealer or repairer of the Complainant are indications of bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceedings

Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Turkish.

The Complainant submitted its Complaint in English and requested the language of the proceedings to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and Turkish. In these circumstances, and taking into account the Respondent's default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceedings be English, Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L,WIPO Case No. DRO2006-0001.

Therefore, the Panel has decided to accept the Complainant's filings in English and issue a decision in English.

6.2. Substantive Elements of the Policy

As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from the Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations of the ELECTROLUX trademark, including trademark registration with the Turkish Patent Institute.

Although the disputed domain name contains the Complainant's trademark in its entirety, it is coupled with a generic word "teknikservisimiz", which means "our technical service" in English. The Panel is of the opinion that the addition of the generic word "teknikservisimiz", does not negate the confusing similarity with the Complainant's trademark. On the contrary, the nature of the generic term used would tend to reinforce consumers' erroneous conclusion that the website to which the disputed domain name resolves is somehow legitimately included in the supply and service system established by the Complainant under its ELECTROLUX trademark see Aktiebolaget Electrolux v. Whois Privacy Protection Service, Inc. / Liderservis plus, WIPO Case No. D2013-1589.

The Panel further finds that the addition of the gTLD ".com" is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. It has been stated in several previous UDRP decisions that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar with the Complainant's ELECTROLUX trademark.

The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. Once the Complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.

The Policy, at paragraph 4(c), provides various ways in which the Respondent may demonstrate rights or legitimate interests in a domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name; the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services; the Respondent is not commonly known by the disputed domain name and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant alleges the Respondent's reason for registering the disputed domain name is to "sponge off" the Complainant's ELECTROLUX trademark.

The Respondent has failed to submit proof of any rights or legitimate interests in the disputed domain name and reply to the Complainant's contentions. Therefore, the Panel finds that there is no evidence to suggest that the Respondent has any rights or legitimate interests in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, the Respondent has acquired no trademark or service mark rights, and the Respondent is not an authorized dealer or representative of Aktiebolaget Electrolux.

Pursuant to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in order for a reseller to be regarded as having a legitimate interest in registering a domain name which incorporates the complainant's trade mark, (i) the respondent should actually be offering the complainant's goods or services via the website attached to the disputed domain name,(ii) the respondent must use the website to sell only the trade marked goods of the complainant, (iii) the website must accurately disclose the respondent's relationship with the trade mark owner and (iv) the respondent should not try to corner the market in domain names which incorporate the complainant's trademark.

In this case, the Complainant submitted screen shots of websites which show that at the time the Complaint was filed the disputed domain name resolved to a website in Turkish that was offering services for Electrolux products and contained the Complainant's trademark, logo and copyrighted material. There was no disclaimer on that website which was disclosing the Respondent's relationship with the Complainant. Therefore, the Panel finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.

The website associated with the disputed domain name was a commercial website used for the promotion of maintenance services offered by the Respondent. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.

As mentioned under Section 4 this Panel notes that the website at the disputed domain name resolves now to an inactive website.

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not provided evidence of its rights or legitimate interests in the disputed domain name. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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.

The Complainant's trademark ELECTROLUX was registered and used before the Respondent's registration of the disputed domain name and the reputation of the Complainant's trademark ELECTROLUX in the field of appliances and equipment for kitchen and cleaning is clearly established. Further, the Respondent's website was offering replacement parts of ELECTROLUX products.. Therefore, the Respondent was aware of the Complainant's trademark ELECTROLUX at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant's trademark at the time of registration of the disputed domain name may be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226.

Further, the fact that the Respondent's website uses the Complainant's trademark ELECTROLUX in connection with offering services related to the Complainant's goods suggests that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.

The Panel also notes that the website at the disputed domain name is currently inactive but this does not prevent a finding of bad faith.

After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element 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 <electroluxteknikservisimiz.com> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Date: February 6, 2015