AB Electrolux v. Valentin Polishchuk / Валентин Полищук
Claim Number: FA1808001803838
Complainant is AB Electrolux (“Complainant”), represented by Cecilia Borgenstam of SILKA Law AB, Sweden. Respondent is Valentin Polishchuk / Валентин Полищук (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeg-daily.com>, registered with Hosting Ukraine LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2018; the Forum received payment on August 28, 2018.
On August 31, 2018, Hosting Ukraine LLC confirmed by e-mail to the Forum that the <aeg-daily.com> domain name is registered with Hosting Ukraine LLC and that Respondent is the current registrant of the name. Hosting Ukraine LLC has verified that Respondent is bound by the Hosting Ukraine LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aeg-daily.com. Also on September 6, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that the <aeg-daily.com> domain name
has no literature meaning in Russian and includes the English word “daily”. In addition, at the time of filing the Complaint, the resolving webpage was operated in the English language and targeted an English speaking audience.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant, AB Electrolux, is one of the world's leading producers of appliances and equipment for kitchen, cleaning, and floor care products. Complainant has rights in the AEG mark based upon the registration with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,338,509, registered October 11, 2016). See Compl. Annex 4. Respondent’s <aeg-daily.com> is confusingly similar to Complainant’s mark as Respondent incorporates the entire AEG mark and merely adds, a hyphen, the descriptive term “daily”, and a “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the <aeg-daily.com> domain name. Respondent is not permitted or licensed to use Complainant’s AEG mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <aeg-daily.com> domain name to mimic Complainant in order to offer products or services that compete directly with Complainant’s business.
iii) Respondent has registered and uses the <aeg-daily.com> domain name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. Additionally, Respondent used a privacy service to conceal its identity. Further, Respondent failed to respond to a cease and desist letter. See Compl. Annex 9. Finally, Respondent had actual knowledge or constructive notice of Complainant’s AEG mark prior to registering the <aeg-daily.com> domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was created on November 8, 2017.
2. Complainant has established rights in the AEG mark based upon the registration with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,338,509, registered October 11, 2016).
3. The disputed domain name resolves to a site which includes images of Complainant’s mark and logo, which offers repairs and services in China that compete directly with Complainant and its business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights to the AEG mark based upon registration with the SAIC. Registration with SAIC sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (“Registration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i).”). Complainant provides a copy of its SAIC registration for the AEG mark (e.g., Reg. No. 1,338,509, registered October 11, 2016). See Compl. Annex 4. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the AEG mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <aeg-daily.com> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant argues Respondent merely adds a generic term, hyphen, and a gTLD to Complainant’s AEG mark. Additions of a generic term, hyphen, or a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues Respondent merely adds the term “daily” with a hyphen and a “.com” gTLD to Complainant’s AEG mark. The Panel agrees with Complainant and finds that the <aeg-daily.com> is confusingly similar to Complainant’s AEG mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <aeg-daily.com> as Respondent is not authorized to use Complainant’s AEG mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Compl. Annex 3. As a result, the Panel sees that the WHOIS information of record identifies registrant as “Valentin Polishchuk / Валентин Полищук.” Id. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims Respondent is using the <aeg-daily.com> domain name to mimic Complainant in order to sell products and services that directly compete with Complainant. Passing off behavior may not evince rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant argues that the disputed domain name resolves to a site which includes images of Complainant’s mark and logo, which offers repairs and services in China that compete directly with Complainant and its business. See Compl. Annex 8. Thus, the Panel agrees with Complainant and finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant claims Respondent registered and uses the <aeg-daily.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to attract, for commercial gain, users to the disputed domain name which features products and services that compete directly with Complainant and its business. Using a confusingly similar domain name to commercially benefit via, competing products or services can support bad faith registration and use per Policy ¶ 4(b)(iv). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). As previously mentioned, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent offers products and services that compete directly with Complainant’s business for commercial gain. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. See Compl. Annex 8. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s AEG mark. The Panel notes that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s famous AEG mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s AEG mark. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the AEG mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeg-daily.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 5, 2018
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