The Complainant is Siemens AG of Erlangen, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Mr. Ozgul Fatih of Izmir Konak, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2010. On October 21, 2010, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On November 3, 2010 B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details.
The Center verified that 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, and the proceedings commenced on November 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2010. The Response was filed with the Center on November 8, 2010.
The Center appointed Anna Carabelli as the sole panelist in this matter on November 10, 2010. 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 one of the largest electrical engineering and electronics companies, active, amongst others, in the areas of IT, communications, transportation, lighting and finance (annexes 5-6 to the Complaint).
The Complainant has provided evidence of trademark registrations for the name SIEMENS (annex 4 to the Complaint), as follows:
- German trademark (n. 2077533, application filed in 1994);
- Community trademark (n. 4240263, application filed in 2005);
- International trademark (n. 637074, covering amongst others Turkey, application filed in 1995)
The Respondent’s domain name was registered on June 28, 2010 as shown by a copy of the Registrar’s WhoIs database annexed to the Complaint. Presently, the disputed domain name is not linked to a website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the SIEMENS mark is well-known worldwide and firmly associated exclusively with the Complainant. The Complainant has been using the mark SIEMENS extensively for decades throughout the world.
The domain name is confusingly similar to its registered trademark SIEMENS since it includes the SIEMENS mark in its entirety and the addition of the word “bank” refers to the Complainant’s business in the area of finance.
In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name since the Complainant has no relationship with the Respondent and the latter is not commonly known by the domain name. The Respondent certainly had knowledge of the internationally famous SIEMENS mark when the domain name was registered given the distinctiveness and international reputation of the SIEMENS mark. Before receiving notice of the dispute, the Respondent was not using the domain name in connection with a bona fide offering of goods or services, nor making any legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the SIEMENS mark.
The Complainant states that the domain name was registered and used in bad faith given that: (a) the Respondent was aware of the SIEMENS mark; (b) by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark, and to disrupt the Complainant’s business. In this connection the Complainant points out that the disputed domain name was registered immediately after the announcement of the Complainant’s plans to launch its own banking subsidiary (annex 6 to the Complaint).
The Complainant also points out that in September 2010, following the Complainant’s request to have the domain name transferred, the Respondent removed the link to the website corresponding to the domain name. B. Respondent
The Respondent contends that the disputed domain name and the commerce venture he intends to start with it do not interfere with or affect the Complainant’s rights. The Respondent also contends that “there are lots of meanings of “Siemens” word especially in Physics, Electrics and that’s just not the monopoly of SIEMENS AG” and that there are at least thirty registered domain names incorporating the word SIEMENS (merely listed in the Response) not belonging to the Complainant. Therefore the Complainant cannot claim a monopoly on the word SIEMENS and the Respondent is free to make a commerce venture using the disputed domain name, which however he discontinued following the Complaint’s “threatening e-mail”
No documents are annexed to the Respondent’s Response. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis 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.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name in issue 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a) (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for the word “siemens” (annex 4 to the Complaint).
The domain name is confusingly similar to the Complainant’s trademark, as it incorporates SIEMENS. The addition of the generic word “bank” cannot serve to distinguish, also in the light of the fact that the Respondent registered the domain name registered immediately after the announcement of the Complainant’s plans to launch its own banking subsidiary (annex 6 to the Complaint).
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the domain name in relation to the three circumstances identified in paragraph 4(c) of the Policy, namely: (i) bona fide prior use; (ii) common association with the domain name and (iii) legitimate non-commercial use.
The Respondent has failed to advance any conclusive argument supporting rights or legitimate interests. As a matter of fact in his Response the Respondent admitted his intention to develop a venture commerce using the domain name but did not provide any relevant details which might prove a bona fide prior use.
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the international reputation of the SIEMENS mark (which the Respondent did not dispute), the Panel finds that in all likelihood the Respondent knew or should have known the Complainant’s SIEMENS trademark at the time he registered the disputed domain name (see Nokia, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Revlon Consumer Product Corp v. Domain Manager WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc. WIPO Case No. D2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info WIPO Case No. D2010-0936). In addition, the Respondent registered the domain name which incorporates entirely the Complainant’s SIEMENS mark with the addition of the generic term bank, immediately after the announcement of the Complainant’s plans to launch its own banking subsidiary (annex 6 to the Complaint).
Based on the above, the Panel agrees that the Respondent has registered the domain name in bad faith.
The fact that at present the domain name appears to be inactive raises the issue of actual use in bad faith, according to the Rules paragraph 4(a)(iii).
According to Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which was followed by several consistent WIPO UDRP decisions, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, under certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s present passive holding of the domain name meets the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent based on the following circumstances:
(i) the Complainant’s trademark is well-known;
(ii) the Respondent has confirmed his intention use the domain name for commercial purposes but has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name;
(iii) the domain name was registered immediately after the announcement of the Complainant’s plans to launch its own banking subsidiary, which fact suggests the Respondent’s intention to disrupt the Complainant’s business and to prevent the Complainant as holder of the trademark SIEMENS from reflecting the mark in a corresponding domain name.
In light of all the above, the Panel deems that it is not possible to conceive any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
In view of all the foregoing the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Dated: November 24, 2010
Full & Egal Universal Law Academy