The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is iikjhjhj ikjkhiuhiu of Indonesia.
The disputed domain name <aegwaschmaschine.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2011. On November 14, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On November 14, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Complainant filed an amendment to the Complaint on November 30, 2011.
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”), 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 November 17, 2011. The case was suspended on November 23, 2011. The Complainant filed an amendment to the Complaint on November 30, 2011. The due date for Response was December 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 3, 2012.
The Center appointed David Williams as the sole panelist in this matter on January 13, 2012. 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.
The Complainant asserted, and provided evidence in support of,, and the Panel finds established, the following facts:
The Complainant, AB Electrolux, is a Swedish joint stock company which was founded in 1901 and registered as a Swedish company in 1919. It produces kitchen and cleaning equipment for professional and domestic use. Its products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers. In 2010, the Complainant had sales of SEK 109 billion and 55,150 employees. One of the brands it sells under is AEG.
The Complainant owns numerous trademarks incorporating AEG in several classes, in countries throughout the world, including but not limited to: France, Switzerland, China, Indonesia, Germany, India, the United Kingdom of Great Britain and Northern Ireland and the United States of America. Examples of the trademarked words include AEG, AEG POUR LA VIE (design), AEG (IM DOPPEL TENRECHTECK), AEG (design) and AEG-NUMERIC (design). The trademark AEG was registered in the United States on October 25, 2005. Attached as Annex 6 to the Complaint is a full list of the registered trademarks which are owned by the Complainant and relevant to the Complaint, and a printout evidencing the Complainant’s ownership of the AEG trademark in the United States.
The Complainant has also registered multiple domain names incorporating the word “AEG” throughout the world, including <aeg.com>, <aeg.de>, <aeg-electrolux.eu> and <aeg-electrolux.com>. The Complainant provided a comprehensive list of its relevant domain names in Annex 7 to the Complaint.
The Respondent registered the Domain Name on August 1, 2011.
On September 22, 2011, the Complainant sent a letter by email to the Respondent. The letter is attached as Annex 11 to the Complaint. The Complainant advised the Respondent that the unauthorised use of the AEG trademark within the Domain Name violated the Complainant’s rights in that trademark, and requested that the Respondent voluntarily transfer said Domain Name to it. The Complainant also offered compensation for the cost of registration and transfer. The Respondent did not reply, and the Complainant sent a reminder on September 27, 2011.
i. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the dominant part of the Domain Name reproduces its trademark AEG and is thus confusingly similar to that trademark. This is compounded by the fact that the trademark is “instantly recognisable” and “world famous”. The Complainant further asserts that the suffix “waschmaschine” (a German translation of the English word “washing machine”) is a generic term which does not reduce the perceived confusion between the Domain Name and the Complainant but in fact strengthens it, as the Complainant sells washing machines. The Complainant also states that the addition of the top-level domain “.com” does not detract from this confusion.
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant states that the Respondent has neither a registered trademark corresponding to the Domain Name nor a license from the Complainant to use the Complainant’s own trademarks. It additionally argues that the mere fact of the Respondent’s registration of the Domain Name is not sufficient to give the Respondent rights in that Domain Name. The Complainant lastly enumerates two reasons why the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. First, the Respondent is not itself a reseller of goods and services. The website corresponding to its Domain Name provides links to another reseller, “Amazon.de”, and the Respondent receives revenue each time a visitor to its website clicks on such a link. The second reason is that the website does not disclose the registrant’s relationship with the owner of the trademark.
iii. The Domain Name was registered and is being used in bad faith
The Complainant alleges that the Respondent chose a Domain Name based on the Complainant’s well-established trademarks in order to generate more traffic to its website. The Complainant further contends that the Respondent’s failure to reply to its letter requesting voluntary transfer of the Domain Name, and the Respondent’s further failure to reply to its reminder letter, is “relevant to a finding of bad faith.” In support of this last contention, the Complainant cites News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Respondent did not reply to the Complainant’s contentions. The Panel notes paragraph 5(e) of the Rules, which states, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.” Therefore the Panel will proceed to decide the dispute on the basis of the record before it.
For the Complainant to succeed in its request that the Domain Name be transferred to it, pursuant to paragraph 4(a) of the Policy, the Complainant must establish that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These issues will be discussed consecutively.
To establish paragraph 4(a)(i) of the Policy, the Complainant must prove that: (a) the Domain Name is identical or confusingly similar with the Complainant’s mark; and (b) that it has rights in the claimed trademark.
As to the first limb, the Panel upholds the Complainant’s submission that the disputed Domain Name is confusingly similar to the Complainant’s trademark.
The Domain Name includes the word “AEG” in its entirety, and AEG is an internationally recognised trademark – the Complainant stated that Electrolux, which trades under the brand AEG as well as under other brands, sells 40 million products to consumers living in 150 different countries every year. The Panel finds that a reasonable Internet user would therefore be likely to confuse the Domain Name and its corresponding website with the Complainant’s mark and business.
As numerous prior panels have held, the addition of generic terms to a trademark does not reduce this confusion (see EAuto, L.L.C. v. Triple S. EAuto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 where “parts” was added to the mark “EAUTO”). The Complainant in particular referred to AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777, which concerned the domain name <electrolux-aeg-servisi.com>. In that case, the panel held that “Respondent’s addition of the generic term ‘service’ does not reduce that confusion.” In this case, the word “waschmaschine” is a similarly generic term to “services” or “parts”. Furthermore, the Panel accepts the Complainant’s contention that as the term is related to the Complainant’s business, the term serves to reinforce, rather than diminish, the confusion between the Domain Name and the Complainant’s trademark.
As to the second limb of Paragraph 4(a)(i) of the Policy, the Panel accepts the Complainant’s evidence that it owns numerous trademarks incorporating the word “AEG” in several classes in countries throughout the world, and finds that this is sufficient to establish rights in that trademark. In support of this position is the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), which states that “If the Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” Multiple prior decisions accord with this view. For example, the panel in The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 held that “the Policy affords protection […] to those having rights in registered trademarks.”
The Panel thus finds that the Domain Name is confusingly similar to the Complainant’s AEG trademark.
While the burden of proving that the Respondent lacks rights or legitimate interests in the Domain Name ultimately rests with the Complainant, if the Complainant makes out a prima facie case that this is so and the Respondent fails to rebut it, the Complainant is usually deemed to have satisfied its burden: See WIPO Overview, paragraph 2.1; Cornell Trading Inc v. Web-Interactive.com Inc, WIPO Case No. D2000-0887; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy sets out several ways in which a respondent may demonstrate that it holds rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
To decide whether paragraph 4(c)(i) is made out, the Panel must first determine the use the Respondent makes of the website corresponding to its Domain Name. The Complainant contends that the Respondent has chosen a well-known brand name to include in its Domain Name to lure customers to its website, which provides links to “Amazon.de”, where washing machines sold by the Complainant as well as their competitors can be purchased. The Respondent receives revenue each time a visitor to its website clicks on these links. The Complainant’s contention is not refuted by the Respondent, and is supported by screenshots of the website which the Complainant has attached as Annex 10 to its Complaint. The website “www.aegwaschmaschine.com” shows a picture of an AEG-Electrolux washing machine with an “Amazon.de” logo and the imperative “klicken sie hier” (“click here”). There is then another screenshot of the “Amazon.de” website where that washing machine may be purchased. The Panel thus accepts the Complainant’s contention that the Respondent is using the Domain Name merely to lure customers to its website.
In issue therefore, is whether the Respondent’s conduct so described amounts to use of the Domain Name in connection with a bona fide offering of goods and services. The Panel refers to a case cited by the Complainant, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The panel in that case enumerates several grounds which must be made out for conduct to amount to a bona fide offering. Firstly, the “Respondent must actually be offering the goods or services at issue.” In terms of what amounts to an actual offering, the panel in Lego Juris A/S v. Andrew Vierling, WIPO Case No. D2010-1913 found that by providing links to a website where LEGO products could be purchased, the Respondent was not offering LEGO products:
“The Panel doubts on the provided record that the Respondent could fairly be described as a genuine reseller of the Complainant’s goods within the meaning of the Policy. Rather it seems to the Panel that if there would be a relevant reseller here it would be Amazon.com, and that the Respondent (by its use of the disputed Domain Name) could at best be described as an intermediary or middle man, profiting from the unauthorized use of the Complainant’s trademark in a domain name to re-direct Internet user [sic] to a location at which LEGO products may purchased from a third party.”
It follows that on these facts, providing links to a website where washing machines can be purchased does not amount to a genuine offering of goods.
The second relevant Oki Data ground is that “[t]he site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.” As the Complainant asserts, and as the Respondent does not refute and as inspection of the screenshots support, the Respondent has not done so.
The Panel also notes that on the website at the Domain Name washing machines of the Complainant’s competitors appear to be sold. Turning to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent is commonly known by the Domain Name. The Panel also accepts the Complainant’s evidence that the Respondent has neither a registered trademark corresponding to the Domain Name, nor has a license or authorisation from the Complainant to use the Complainant’s trademarks.
In relation to paragraph 4(c)(iii) of the Policy, the Panel’s above finding with regard to paragraph 4(c)(i), that the Respondent uses the Domain Name to provide links for profit, rules out the possibility that the Respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain”.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b)(iv) of the Policy states that evidence of bad faith includes if “by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location”.
It is extremely unlikely that the Respondent would have registered its Domain Name unaware of the Complainant’s trademark, given that AEG is otherwise a random combination of letters, and that the Respondent’s website contains links to washing machines, which are sold under the AEG trademark by the Complainant. Instead, the Panel finds that the Respondent clearly hopes that customers searching for AEG-branded washing machines on the Internet will confuse its website with the website of AEG (or an AEG-authorised retailer), visit its website, and generate revenue for it by clicking on the provided links. The Respondent’s conduct therefore falls within paragraph 4(b)(iv) of the Policy.
Furthermore, as the Complainant points out, prior panels have held that a failure to respond to a Complainant’s attempt to contact a respondent points towards a finding of bad faith: See Encyclopaedia Britannica v. John Zucarini, The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 and News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623.
The Panel accordingly finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aegwaschmaschine.com> be transferred to the Complainant.
David Williams
Sole Panelist
Dated: January 27, 2012