WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens Aktiengesellschaft v. bak jogsub
Case No.�D2006-0972
1. The Parties
The Complainant is Siemens Aktiengesellschaft, of Germany, represented by Katja�Lange, Germany.
The Respondent is bak jogsub, of Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names and are registered with Cydentity, Inc. dba C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on August�2,�2006. On August�4,�2006, the Center transmitted by email to Cydentity, Inc. dba C a request for registrar verification in connection with the domain names at issue. On August�8,�2006, Cydentity, Inc. dba C 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 administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August�18,�2006. 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 August�21,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was September�10,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�11,�2006.
The Center appointed Moonchul�Chang as the Sole Panelist in this matter on October�4,�2006. 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
On September�14,�1994, the Complainant registered the trademark SIEMENS in Germany. Since then it registered the trademark in many countries including the Republic of Korea. With the expansion of the Complainant’s business in international market, the trademark is now considered famous and widely known in most countries.
The trademark NOKIA is also considered famous and widely known internationally and it registered in many countries in the European community, and in countries such as Finland, Canada, and the United States of America.
The disputed domain names were registered by the Respondent on June�19,�2006, when the joint venture between Nokia Corporation and Siemens AG, called “Nokia Siemens Networks”, was announced publicly and officially by the both companies on the same day.
Siemens AG is authorized by Nokia Corporation to claim their rights against the disputed domain names.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain names and are confusingly similar to the trademarks SIEMENS and NOKIA because they contain each of the trademarks and the foundation of a joint venture company of “Nokia Siemens Networks” was announced publicly when the disputed domain names were registered.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names because he should have known that there would be a conflict between the disputed domain names and the trademarks SIEMENS and NOKIA. Furthermore the Respondent cannot use the domain names in any way without creating confusion about who has control of the domain names or infringing the trademark rights of the famous trademarks SIEMENS and NOKIA. In addition, the Respondent is neither known under these domain names nor can show non-commercial fair use of the domain names.
The Complainant further contends that the Respondent registered and used the domain names in bad faith primarily for the purpose of selling them to the Complainant. The�Respondent offered via a lawyer to negotiate the transfer of the domain names at $30,000, which indicates that he has registered the domain names in bad faith with the objective of making money by selling them. In addition, the Complainant contends that it is obvious that the Respondent registered the domain names primarily to prevent the trademark owners from reflecting their trademarks in a corresponding domain name and to disrupt the business of the new joint venture. The Respondent intended to profit from the fact that he registered the domain names on the same day the join venture “Nokia Siemens Networks” was publicly announced.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was submitted in English language. Before the Complaint was submitted, the language used in correspondence between parties was English and the lawyer of the Respondent also answered in English to a warning letter sent by the Complaint.
According to paragraph�11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. It is noted, however, that the spirit of paragraph�11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. In this case, the Complainant is not able to communicate efficiently in Korean and the Respondent has not participated in these proceedings.
Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph�11 of the Rules, that English shall be the language of administrative proceeding in this case.
B. Substantive Elements of the Policy
Paragraph�15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, under paragraph�14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules, as it considers appropriate. Under paragraph�4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.
C. Identical or Confusingly Similar
The domain names at issue incorporates two trademarks SIEMENS and NOKIA. At the same time they contain the name of a joint venture company between Nokia Corporation and Siemens AG which is called “Nokia Siemens Networks”.
In the present case, the disputed domain names are confusingly similar to the Complainant’s trademark because the domain names are closely associated with the Complainant’s joint venture company of Nokia Siemens Networks but has no apparent connection with the Respondent.
Therefore, the Panel concludes, that the disputed domain names are confusingly similar to the Complainant’s registered trademark.
Accordingly, the first element under paragraph 4(a) of the Policy has been met by the Complainant.
D. Rights or Legitimate Interests
The Panel considers that under paragraph�4(a)(ii) of the Rules, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie evidence that the Respondent has no rights or legitimate interests, the burden shifts to the Respondent.
First, it is considered that in the absence of any license or permission from the Complainant to use such famous and widely known trademarks no actual or contemplated bona fide or legitimate use of the domain name could be claimed. Such is the case here, inasmuch as the Complainant is widely known and never gave any license or other permission to the Respondent to use the name “siemens”, “nokia” or “nokiasiemensnetworks”.
Secondly, the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services at present. He offers one page of parking website, simply saying “Welcome to . Thanks for your visit. If you have any question, please email me”. It can be inferred that the Respondent’s primary purpose in registering and using the domain names was to sell them to the Complainant. In fact the lawyer of the Respondent offered the transfer of the domain names at $30,000.
Finally, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain names. The name “nokiasiemensnetworks” has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
E. Registered and Used in Bad Faith
Paragraph�4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith”. As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and that other circumstances may likewise lead to a finding of bad faith registration and use.
Since the trademarks NOKIA and SIEMENS are widely known in many countries, including the Republic of Korea, the Respondent presumably registered the disputed domain names with notice of the Complaint’s trademark registration. It is also concluded that the Respondent registered the domain names in the expectation of selling them to the Complainant. This is supported by the fact that the lawyer of the Respondent offered the Complainant to transfer the domain names at $30,000 before the Complaint was submitted to the Center.
Furthermore the Respondent registered the disputed domain names on the same day the joint venture between Nokia Corporation and Siemens AG was publicly announced. A�number of WIPO UDRP Cases show that this opportunistic registration of the name or likely name of a new entity to be formed from the joint venture or merger of two multinationals is a good example of bad faith registration and use. See Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case�No.�D2003-0112.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the domain names and in accordance with paragraph 4(b) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraph�4(i) of the Policy and paragraph�15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Dated: October�18,�2006
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