The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondents are PrivacyP of Nobby Beach, Australia, Ravindra Potdar, PeakSoft Technologies Pvt. Ltd. of Maharashtra of India and SIT, James Walker of Queensland, Australia. 2. The Domain Names and Registrars
The disputed domain names and (the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2011. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name . On December 10, 2011, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the 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 12, 2011, 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 amended Complaint on December 15, 2011.
On December 15, 2011, the Center received a request by the Complainant that the Complaint be extended to include a second domain name – the Domain Name . On December 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name . On December 23, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name , which differed from the named Respondent and contact information provided by the Complaint. On January 19, 2012, the Center sent an email communication to the Complainant, providing the registrant and contact information for the Domain Name , as disclosed by the Registrar. The registrant and contact information for the Domain Name differed from the registrant and contact information for the Domain Name . Consequently, the Center requested the Complainant either to file a separate Complaint for the Domain Name , or to provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are, in fact, the same entity (e.g. the Domain Names or the websites to which they resolve are subject to common control). The Complainant filed an amended Complaint on January 24, 2012.
On January 25, 2012, the Center notified the Complainant a formal deficiency with the Complaint (an incorrect identification of the correct Registrar in respect of the Domain Name ), which was corrected by the Complainant on January 27, 2012 by filing of a duly amended Complaint.
The Center verified that the original Complaint and the Complaint as amended 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 January 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. The Response by one of the Respondents, i.e., Ravindra Potdar, PeakSoft Technologies Pvt. Ltd., was filed with the Center on February 16, 2012. The other Respondents did not file any Response.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 1, 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.
On the request for consolidation of the proceedings in respect of the two Domain Names, the Panel notes the following:
Paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules, but neither the Policy nor the Rules expressly provide for the consolidation of complaints against different respondents in a single administrative proceeding. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain-name holder. Thus, the Policy would seem to require a complainant to initiate separate proceedings against each domain name registrant, unless the relevant registrants are actually one singular domain name holder under the meaning of paragraph 3(c) of the Rules.
If the relevant domain name registrants are controlled by a single person or entity, they may be treated as a single respondent for the purposes of the Policy and the Rules. Common control or ownership has been found in circumstances indicating that a single person or entity has registered multiple domain names using fictitious names. See Yahoo! Inc. v. Y, Y, Y, Y and Benjamin Benhamou,WIPO Case No. D2001-1188. Multiple respondents have been found to be commonly controlled where the content of their websites was substantially identical. See CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071. The consolidation of multiple respondents and multiple domain names has been found appropriate where domain names were registered with same registrar and resolved to essentially identical websites. See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659.
The Panel concludes from its review of the relevant UDRP decisions discussed above, that the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, if the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve, and if consolidation would be procedurally efficient and fair and equitable to all parties.
The evidence brought before the Panel indicates that the two Domain Names are more likely than not under common control. The registrant of the Domain Name has stated in its Response that it has maintained the Domain Name for one of its clients, and has not disputed the allegation of the Complainant that the two domain Names are under common control. In addition, the content of the websites associated to the two Domain Names is very similar. The Panel further notes that the Complainant's claims respecting each of the two Domain Names involve common issues to be resolved.
Therefore, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control. The Panel finds such common control sufficient to justify consolidation of the Complaint against the Respondents in this proceeding. Neither of the Respondents has opposed to such consolidation.
For the above reasons and having regard to all relevant circumstances, the Panel concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore, will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. Accordingly, the Panel approves the consolidation of the two Domain Name disputes asserted by the Complainant against the three Respondents. 4. Factual Background
The Complainant, Siemens AG, headquartered in Berlin and Munich, is one of the world's largest electrical engineering and electronics companies. It provides innovative technologies and comprehensive know-how to benefit customers in 190 countries around the world. Founded more than 150 years ago, the company is active in the areas of information technology and communications, automation and control, power, transportation, medicine, lighting, finance, etc.
The Complainant is the owner of the following trademarks (the “SIEMENS trademark”):
- German trademark No. DE 2077533 SIEMENS,registered on September 14, 2004 for goods and services in International classes 01, 03, 05, 06, 07, 08, 09, 10, 11, 12, 14, 16, 17, 20, 21, 28, 35, 36, 37, 38, 40, 41, 42 and 44;
- Community trademark No. CTM 004240263 SIEMENS, registered on March 28, 2006 for goods and services in International classes 1, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 20, 21, 28, 35, 36, 37, 38, 39, 40, 41 and 42; and
- International registration No. IR 637074 SIEMENS, registered on March 31, 1995 for numerous countries for goods and services in International classes 1, 3, 5, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 20, 21, 28, 35, 36, 37, 38, 40, 41 and 42.
The Domain Name was registered on September 16, 2011. The Domain Name was registered on December 9, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the SIEMENS trademark is famous. As a result of long and extensive use, the SIEMENS trademark has become one of the best known trademarks in the world, and enjoys a very broad scope of protection. The SIEMENS trademark is associated exclusively with the Complainant, and is well recognized as a symbol of quality of the concerned goods and services.
According to the Complainant, the Domain Names are confusingly similar to the SIEMENS trademark. Due to the reputation of the trademark, Internet users will automatically recognize it or its easily recognizable abbreviation "siem-" in one of the Domain Names and in the other Domain Name the SIEMENS trademark is fully incorporated. The letters "it" are a very usual abbreviation for "information technology" and merely refer to the Complainant's business, and the adjective "global" merely refers to the global character of the information technology and to the global business of the Complainant. The abbreviation of the SIEMENS trademark as "siem", and the additional elements "it" and "global" in one of the Domain Names and the addition of the element “it” to the other Domain Name is not sufficient to avoid any confusing similarity between the SIEMENS trademark and the Domain Names. Therefore, the public will recognize the SIEMENS trademark and disregard the descriptive elements "it" and/or "global", and will thus be under the false impression that the Domain Names belong to the Complainant.
The Complainant further submits that the website associated to the Domain Name contained further references to the SIEMENS trade name and the SIEMENS trademark. The SIEMENS trademark was highlighted on every page of this website. The Respondent also pretended to be the company "SIEMENS IT SYSTEMS" providing information technology and business services, and presented itself as belonging to the "world's largest group of companies". An almost identical content was available in mid December 2011 at the website associated to the Domain Name . This layout of the two websites was similar to the layout of the website of the Complainant. As a conclusion, the Domain Names are confusingly similar to the earlier SIEMENS trademark. Internet users will interpret the addresses "www." and "www." as Internet addresses of the Complainant to obtain information about the Complainant's offers in the field of Information Technology. The website at the Domain Name contained a message that "SIEMENS IT is now became SIEMENS IT GLOBAL", provided a link to access directly to the website at the Domain Name , and indicated that it would be opened for only one week more, and that the registered members have to login directly on the website at the Domain Name .
According to the Complainant, the Domain Name was registered on December 9, 2011 as a direct consequence of the filing of the Complaint on December 8, 2011, and was intended to replace the Domain Name . These circumstances show that the two Domain Names and websites are under the control of one and the same person.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the Domain Names. None of them is or has ever been a representative or licensee of the Complainant. The Respondents do not own any trademark rights in the trademark SIEMENS. The Respondents are not using the Domain Names in connection with a bona fide offering of goods or services, and have not been commonly known by the Domain Names either. The Respondents are not making any legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the SIEMENS trademark or service mark at issue.
According to Complainant, the Domain Names were registered and are being used in bad faith. The Respondents had knowledge of the Complainant's trademark, which has been well-known for decades throughout the world. Although the Respondents were aware of the SIEMENS trademark, they deliberately registered the confusingly similar Domain Names, and used the SIEMENS trademark and trade name in the corresponding websites. The Respondents did so with the intention to use the strong reputation throughout the world of the SIEMENS trademark in order to confuse the public and to cause damage to the Complainant by disrupting its business. The Domain Names were also registered in order to prevent the Complainant from reflecting the SIEMENS trademark in a corresponding domain name. As the Complainant also has a global business in the field of Information Technology, it was very conceivable that the Domain Names would be of relevance for the Complainant. In conclusion, the Domain Names were selected by the Respondents with intent to attract, for illegitimate purposes, Internet users and to cause damage to the Complainant. B. Respondent
The Respondent Ravindra Potdar, PeakSoft Technologies Pvt. Ltd., filed an informal Response in the following terms:
“Respected Sir /Madam,
Your mail has been received and read,
domain which is disputed one, is of our clients, and we don’t have any kind of stake or financial relation to Clients Company or their business.
Domain dispute case was filed against us, which we were unaware of, due to emails you were sending on itworks id, which is not in use.
so that email was read lately, as we read your email, they would abandon the service to that Domain Name. We stopped all the services to that particular domain.
It wasn’t our deliberate effort, it happens coincidently, we highly regret for it.
We try to not happen this in future again.
Thanks
Ravindra Potdar
Peaksoft Technologies”
The other two Respondents did not file any Response. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Names:
(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Respondent has registered and is using the Domain Names in bad faith.
According to the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with Rules, paragraph 2(a), and the Respondents were given a fair opportunity to present their case.
In this administrative proceeding, the Respondents have chosen not to submit formal Responses, and only one of them filed a brief email communication in reponse to the Notification of the Complaint by the Center. This conduct of the Respondents leads the Panel to conclude that they have no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents on the record of this case and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the SIEMENS trademarks, registered in various countries around the world. The Panel will therefore analyze the existence of confusing similarity between the SIEMENS trademark and the Domain Names.
A.1.The Domain Name
It is a common practice under the Policy to disregard the gTLDs such as the “.org” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is “siemensit”. The element “siemens” is identical to the Complainant’s trademark, and the “it” element is identical to the abbreviation of “information technology” in English. It is likely that the internet users would regard it as a supplementary element and an indication of the business to which the Domain Name refers. Therefore, the attention of an average Internet user would be mainly attracted by the dominating “siemens” element of the Domain Name, and he/she may think that an affiliation of some sort exists between the Complainant and the Respondent.
On these grounds, the Panel finds that the Domain Name is confusingly similar to the SIEMENS trademark.
A.2. The Domain Name
Here again, the gTLD “.com” section of this Domain Name is to be disregarded for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is “siemitglobal”. The Complainant suggests that an Internet user would regard this section as a combination of the elements “siem”, “it” and “global”, the first appearing to be an abbreviation of the SIEMENS trademark, the second could be an abbreviation for “information technology”, while the third is an indication for the global character of the information technology and of the business of the Complainant. As a further argument for the confusing similarity, the Complainant refers to the content of the website associated to this Domain Name.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for identity or confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).
As further discussed in Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, WIPO Case No. D2008-1267, “[…] it is now well-established that the content of the Respondent's website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants' trade mark and the Domain Name.”
Analyzing the Domain Name and taking into account the views of various UDRP Panels, as summarized above, the Panel is not convinced by the Complainant’s argument that for an average Internet user the element “siem” would represent an abbreviation of the Complainant’s SIEMENS trademark and that would be confusingly similar to them. To the Panel’s view, Internet users are more likely either to regard “siemitglobal” as a combination of “siemit” and “global”, or to regard “siem” as a separate element, than to identify it as an abbreviation of “siemens”, regardless how well known or famous the SIEMENS trademark may be. As to “siem” and “siemit”, the Panel is not convinced that either of them is confusingly similar to the SIEMENS trademark. As discussed above, the content of the associated website is not relevant for the purposes of the confusing similarity analysis, although it may be revealing for the intentions of the Respondents when registering the Domain Names.
Taking all the above into account, the Panel finds that the Domain Name is not confusingly similar to the Complainant´s SIEMENS trademark. Since the Policy requires that all three elements under Paragraphs 4(a)(i)(ii(iii) of the Policy be proven, the Panel does not need to examine whether the Respondents have legitimate rights and interests in the Domain Name , or whether it was registered and is being used in bad faith.
However, the Panel notes that its finding above is made solely for the purposes of the present Decision under the Policy, and is without prejudice for any trademark infringement actions that the Complainant may initiate before the courts of competent jurisdiction in relation to the conduct of the Respondents as alleged by the Complainant. B. Rights or Legitimate Interests
The Complainant claims that the Respondents have no rights or legitimate interests in the Domain Name , and provides certain arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name, the burden shifts to that respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondents have chosen not to present to the Panel any allegations or documents in their defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondents had any justification for registering or using the Domain Name , they could have provided it. In particular, neither of the Respondents has contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favor.
The only information available about the Respondents is the publicly available WhoIs information, provided by the Registrar. The WhoIs information does not contain any evidence of rights or legitimate interests of any of the Respondents in respect of the Domain Name .
At the same time, the Domain Name is confusingly similar to the SIEMENS trademark of the Complainant. The Respondents did not claim rights or legitimate interests in respect of this Domain Name and provided no explanation whatsoever for its registration and use. As submitted by the Complainant, and not denied by the Respondents, the Domain Name is linked to a website containing numerous references to the SIEMENS trade name and the SIEMENS trademark. Said website presents a company called "SIEMENS IT SYSTEMS" claiming to provide information technology and business services and to belong to the "world's largest group of companies". In this situation, it is possible that Internet users seeking information about the Complainant’s products and services may reach the Respondent’s website expecting that an affiliation of some sort exists between the Complainant and the Respondents, and then be exposed to the content of the website. At the same time, none of the Respondents has alleged in this proceeding that such a company called "SIEMENS IT SYSTEMS" and different from the Complainant actually exists, and in the Panel’s view, the existence of a such company providing information technology T services and belonging to the "world's largest group of companies", without being somehow affiliated to the Complainant, appears unlikely.
The above satisfies the Panel that the Respondents are aware of the goodwill of the Complainant and of the SIEMENS trademarks, and it is likely that this goodwill has motivated the Respondents to choose to register the Domain Name and to link it to a website containing information about a company which, more likely than not, is fictitious.
In the Panel’s view, such conduct could not be regarded as giving rise to rights and legitimate interests of the Respondents in the Domain Name . Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to the Complainant’s SIEMENS trademark, and was registered by the Respondents without having rights and legitimate interests in it, while at the same time being aware of the Complainant and its goodwill. Having registered it, the Respondents have used the Domain Name to link it to a website containing numerous references to the Complainant’s SIEMENS trademark, and information about what is likely a fictitious company called “SIEMENS IT SERVICES”. As discussed in relation to the issue of rights and legitimate interests, this conduct could make Internet users searching for information about the Complainant’s products reach the Respondents’ website expecting that an affiliation of some sort exists between the Complainant and the Respondents, and then be exposed to the content of the website, which may lead to a situation in which the Respondents benefit from the initial interest of Internet users and derive income or other advantage, or in which a damage may be caused to the reputation of the Complainant.
Taking all the above into account, and in the lack of any contrary evidence or even allegation of any actual or contemplated good faith use of the Domain Name , the Panel on balance finds that the Respondents have registered and used the Domain Name in bad faith by intentionally attempting to attract, for commercial or other gain or for an illegitimate purpose, Internet users to the website at the Domain Name by creating a likelihood of confusion with the Complainant’s SIEMENS trademark as to the source, sponsorship, affiliation or endorsement of this website. 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:
a) The Domain Name be transferred to the Complainant; and
b) The Complaint for the Domain Name be denied.
Assen Alexiev
Panelist
Dated: March 19, 2012
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