The Complainant is SIEMENS Product Lifecycle Management Software Inc. of Plano, Texas, United States of America, represented by Müller Fottner Steinecke, Germany.
The Respondent is SOLID Applications Ltd of Oldbury, West Midlands, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2012. On April 25, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On April 25, 2012, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 April 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2012. The Response was filed with the Center on May 17, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on May 22, 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. 4. Factual Background
The Complainant is a subsidiary of Siemens, AG (“Siemens”) of Berlin, Germany which is one of the world’s largest electrical engineering and electronics companies. Siemens operates in 190 countries and has been in business for very many years in many different fields.
Siemens offers goods and services under its principal trademark SIEMENS, as well as under other registered trademarks such as SOLID EDGE.
The Complainant owns a United States registered trademark for the term SOLID EDGE which was first in use in the United States in 1996 and registered to a predecessor in title in 1998. The trademark is used for SOLID EDGE software which was developed in 1996 and acquired by the predecessor of the Complainant in 2007.
The Complainant also owns a European Community trademark for the words SOLID EDGE which trademark was registered on March 22, 2010.
The disputed domain name was first registered by the Respondent on August 25, 2000. The Respondent has been a reseller of Solid Edge products since 1998. Prior to 2007, when Siemens’ interests acquired the SOLID EDGE trademark, the Respondent has used the website accessed by the disputed domain name without complaint from the trademark’s previous owners.
In February/March 2010, the Complainant and the Respondent entered into a ‘Channel Partner Reseller Agreement’ (the “Agreement”) which contained inter alia an acknowledgment by the Respondent that “all trademarks, trade names, service marks, copyrights and other proprietary rights relating to the software… are the property of Siemens PLM”.
On August 16, 2011, the Complainant advised the Respondent that the Complainant had suspended the Respondent’s right to sell SOLID EDGE software in accordance with the Agreement which stated inter alia that upon termination or expiry of the agreement, the Respondent would immediately discontinue all use of Siemens’ trademarks, etc.
On September 21, 2011, the Complainant requested the Respondent to assign the disputed domain name to the Complainant. On December 9, 2011, the Respondent terminated the Agreement with effect from February 26, 2012.
On its website, accessed through the disputed domain name, the Respondent offers similar goods to those of the Complainant. It also offers a “training course” with the aim that SOLID EDGE users might change to competing products. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. It differs from them only by the addition of the letters ‘uk’’ which refer to the United Kingdom, where the Respondent is based.
The Respondent has no rights or legitimate interest in the disputed domain name. Any rights it might have had as a reseller ended when the agreement was terminated.
The Respondent offers identical goods to those covered by the Complainant’s trademarks. This is an unfair use of the Complainant’s marks and causes damage and/or tarnishment of the Complainant’s marks. The disputed domain name’s continued use by the Respondent illegitimately attracts Internet users to the Respondent’s website and thus causes damage to the Complainant.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent refused to transfer the disputed domain name to the Complainant when requested. The Respondent has no rights or legitimate interests in the disputed domain name – particularly after the Agreement was terminated. B. Respondent
The Respondent has been a reseller of SOLID EDGE products since 1998. It registered the disputed domain name in August 2000 and launched the website over ten years ago. Siemens has been aware of the Respondent’s website, since it acquired rights to SOLID EDGE from the previous owner. The previous owners of the SOLID EDGE trademark had supported the Respondent in its largest market over the years since the disputed domain name was registered.
The Respondent’s website is used to advertise products and services which the Respondent has supplied since 1998. Since the Complainant acquired the SOLID EDGE trademark, the Respondent has not been made aware of any issues about its website which have been used to redirect customers to other Siemens products.
The Respondent has not asked illegitimately or differently with respect to the disputed domain name for 12 years. It is a market leader in sales and development of the SOLID EDGE brand with an excellent reputation with over 300 customers. The Respondent still has accredited staff to perform customer training and consultancy for the SOLID EDGE range. Other companies use and have used for many years the words SOLID EDGE in their websites. The Respondent denies registration and use in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The addition of the letters ‘uk’ in the disputed domain name does not diminish the confusing similarity. Rather, it accentuates it by confining the mark to a particular country.
Accordingly, Paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests and C. Registered and Used in Bad Faith
The Panel does not need to investigate whether the Respondent has rights or legitimate interests in the disputed domain name because the Complainant has failed to prove registration in bad faith as required by Paragraph 4(a)(iii) of the Policy.
The disputed domain name was registered in 2000 when the trademarks were owned by the Complainant’s predecessor in title. From then until the Complainant terminated its Agreement with the Respondent in 2011/12, the Respondent appears to have been using the disputed domain name to access its website without any complaint from the owner for the time being of the trademarks.
It is impossible therefore to infer that the disputed domain name was registered in bad faith at the date of registration as at that date (August 25, 2000), the Respondent may well have thought that it was entitled to register the disputed domain name since it was at that time acting as a reseller for the owner of the trademark and actively engaged in selling SOLID EDGE products.
Because bad faith registration has normally to be proved separately from bad faith use, the current status of the Respondent’s conduct in maintaining a website under the disputed domain name does not matter for the purposes of the Policy.
This is not a case suitable for the necessarily limited procedures under the Policy. The Respondent is not a cybersquatter – the sort of opportunistic domain name registrant against whom those fairly summary procedures of the Policy were primarily directed.
If the Complainant considers that the present conduct of the Respondent with respect to the disputed domain name constitutes a breach of its trademark rights, then it is open to the Complainant to bring infringement proceedings in a national court. There, the matter can be fully assessed with oral evidence and cross-examination and full consideration of relevant trademark law.
The Panel adopts with respect what was said succinctly by an experienced Panelist in Oki Data Americas, Inc v ASD, Inc., WIPO Case No. D2001-0903:
“It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. The T, LLC v. Poploff, WIPO Case No. D2000-1470 (WIPO Jan. 5, 2001). If trademark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations.”
Accordingly, the Complainant has failed to prove bad faith registration by the Respondent of the disputed domain name. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Sole Panelist
Dated: June 5, 2012
Full & Egal Universal Law Academy