The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Cong Ty Tnhh Thuong Mai Va Dich Vu Thuan Anh, Thuan Anh Services and Trading Company Limited of Ho Chi Minh, Viet Nam / Thuan Anh Trading & Service Co., Ltd of Ho Chi Minh, Viet Nam / Thuan Anh Trade and Service Company Ltd of Phu Thanh Ward, Tan Phu District, Viet Nam, representing itself. 2. The Domain Name and Registrar
The disputed domain name is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, with reminders sent by email and fax on May 28, May 30, May 31, June 6, June 10, June 18 and June 21, 2013. On June 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On the same date, the Registrar confirmed that the language of the registration agreement is Vietnamese. On June 25, 2013, the Respondent sent a pre-commencement email communication to the Center in English explaining that its ownership of the disputed domain name is “absolutely legal”. On June 26, 2013, the Center acknowledged receipt of said email communication and invited the Parties to either settle the dispute or agree on the language of the proceedings. On June 28, 2013, the Respondent expressed its agreement “to use English language on this proceeding” and the Complainant confirmed the agreement on the language of the proceedings on the same date.
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 June 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2013. The Response was filed with the Center on July 18, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 30, 2013. 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 world’s largest electronics companies founded more than 150 years ago with customers in 190 countries. It owns registered trademarks for SIEMENS covering, inter alia, Germany, the European Community, Viet Nam, and the United States of America, registered as early as 1994.
The Respondent registered the disputed domain name on August 7, 2012. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is one of the world’s largest electronics companies founded more than 150 years ago with customers in 190 countries. It owns registered trademarks for SIEMENS covering, inter alia, Germany, the European Community, Viet Nam and the United States. The trademark SIEMENS is associated exclusively with the Complainant. The Complainant is also doing business in Viet Nam where the Respondent is located.
The Complainant offers worldwide the corresponding goods and services in the automation and transportation field under the trademark SIEMENS. Furthermore, the Complainant is known as having presented the world’s first electric elevator in the year 1880 as to be seen from the history of the Complainant explained on the corporate website of the Complainant.
The disputed domain name is confusingly similar to the Complainant’s SIEMENS trademark.
The Complainant states that due to its reputation, the public will automatically recognize the mark SIEMENS, which is identically contained in the disputed domain name. There is no doubt that the disputed domain name is confusingly similar since the additional term “elevator” merely refers to the Complainant’s automation and drives technology area providing controlling devices for example also for elevators. Therefore, the public will focus on the famous sign “siemens” and disregard the further purely descriptive term “elevator”. Therefore, the Internet users will have the false impression that the disputed domain name is an official Internet address of the Complainant.
The disputed domain name is composed of the trademark SIEMENS followed by a descriptive indication which will either be disregarded or be seen as a descriptive indication with respect to the specific elevator business field of Siemens.
The Respondent has no rights or legitimate interests in the disputed domain name. It is not one of the Complainant’s representatives or licensees.
The Complainant states that the website at the disputed domain name is using an identical copy of the word and device mark SIEMENS and the virtually identical copy of the petrol-blue color which is the house color of SIEMENS. The Respondent’s website attempts to imitate the getup and design of the Complainant according to the copies of the website of the Respondent enclosed as Annex 9 of the Complaint.
The design of the Respondent’s website show that there is no bona fide offering of goods or services. Moreover, the Respondent is making a clear commercial and unfair use of the disputed domain name and has an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.
The Complainant states that the Respondent’s website suggest that the services are offered by an Italian affiliated of the Complainant “Siemens Elevator SRL” located at Ventimiglia, Imperia, Italy. This reference to the false company name “Siemens Elevator SRL” is used twice on the website, namely at the first place prominently on the top of the website next to the trademark-like imitation of the “Siemens” logo and on the bottom of the website with the address of the false company. The Complainant asserts that this company does not exist. The Complainant has an Italian affiliated company, namely Siemens SpA, but that company is located in Milan, Italy.
According to the Complaint, the Respondent had knowledge of the Complainant’s trademark, which has been famous for decades throughout the world. It is unimaginable that the Respondent was unaware of the trademark SIEMENS, which has been extensively used - also in Viet Nam - for numerous years prior to the registration of the disputed domain name .
With respect to bad faith, the Complainant states that the Respondent intended to use the strong reputation throughout the world of the Complainant’s trademark SIEMENS in order to confuse the public and to cause damage to the Complainant in disrupting its business. By using the disputed domain name with a getup and design which is identical to the Complainant’s getup and design of its websites, the Respondent shows that he intentionally attempts to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of products and services on the Respondent’s website. Moreover, as mentioned above, the Respondent’s website suggest that they are offered by an Italian (non-existing affiliated of the Complainant), Siemens Elevator SRL.
The disputed domain name was registered in order to prevent the Complainant from reflecting the mark SIEMENS in a corresponding domain name. The Complainant already owns and uses numerous domain names for business purposes, consisting of the mark “Siemens + addition”.
The Complainant requests as a remedy the transfer of the disputed domain name. B. Respondent
On June 25, 2013, the Respondent sent a pre-commencement email communication to the Center in English explaining that its ownership of the disputed domain name is “absolutely legal”.
The Respondent filed a Response on July 18, 2013. The Respondent states that “Siemens Elevator” is the name of Siemens Elevator SRL, a registered business by “Camera di Commercio Imperia” in Italy. This company has no relationship with Siemens AG.
The disputed domain name was purchased by Thuan Anh Trading & Services Co., Ltd. when no other organization owned it.
The disputed domain name was used for advertising and selling elevator products of Siemens Elevator SRL only. The Respondent is distributor of Siemens Elevator SRL in Viet Nam.
The Respondent attaches a copy of the WhoIs of the disputed domain name and a letter of authority where a person signs on behalf of Siemens Elevator SRL. The letter designs the Respondent as authorized agent of Siemens Elevator to sell elevator and escalator systems in Viet Nam. The letter is dated March 1, 2013. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Language
The Complaint was filed in English language.
On June 21, 2013, the Registrar confirmed that the language of the registration agreement was Vietnamese.
On June 28, 2013, the Respondent expressed its agreement “to use English language on this proceeding” and the Complainant confirmed the agreement on the language of the proceedings on the same date.
According to paragraph 11(a) of the Rules, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Parties have agreed on the language of the proceedings, therefore there is no decision to adopt on this matter by the Panel. B. Identical or Confusingly Similar
The Complainant has trademark registrations for SIEMENS including registrations in Germany, the European Community, Viet Nam and the United States.
The disputed domain name is confusingly similar to the Complainant’s trademark consisting of the Complainant’s SIEMENS registered trademark and the generic term “elevator”, suggesting identification of a party called “Siemens” or perhaps indicative of the “elevator” products referred to on the website at the disputed domain name.
The distinctive part of the disputed domain name is the SIEMENS trademark. The addition of generic term “elevator” does nothing to prevent the confusing similarity of the disputed domain name with the Complainant’s SIEMENS trademark.
As such, the Panel holds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights for the purpose of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain names or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has never been licensed or authorized by the Complainant to use the SIEMENS trademark or the disputed domain name.
On the record in this case, the Panel sees no clear and convincing evidence of relevant rights or legitimate interests. The Panel weighed all the evidence and the conclusion is that there are no rights or legitimate interests to justify the use of the disputed domain name.
The consensus view is that the general standard of proof under the UDRP is “on balance” - often expressed as the “balance of probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(b) of the UDRP would typically be insufficient (see paragraph 4.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Respondent asserts to be an authorized agent of a company called Siemens Elevator SRL from Italy. To prove that extent, the Respondent has filed as evidence a letter of authority where Siemens Elevator SRL designs the Respondent as authorized agent of Siemens Elevator to sell elevator and escalator systems in Viet Nam.
The only evidence supporting the Respondent’s claim is a “letter of authority”, a private document dated March 1, 2013. The “letter of authority” was signed by the manager of Siemens Elevator SRL. There is no additional explanation in the Response about this company or its manager. No bylaws or statutes of the allegedly Italian company were filed in the case. The disputed domain name was registered on August 7, 2012 and the letter was signed on March 1, 2013.
There is no evidence of invoices, sales, clients, advertising, brochures or any other indicia to show current real use of the disputed domain name or the sale of goods or services in commerce either by the Respondent or by Siemens Elevator SRL.
At the time of filing the Complaint the disputed domain name resolved to a website containing descriptions of elevators and escalators products with the brand Siemens, as described in Annex 9 of the Complaint. In the website at the disputed domain name there was a trademark-like imitation of the Complainant’s “Siemens” logo including its green light color, and at the bottom of the website there was an address for the Italian company. The Complainant contends that this company does not exist. The Complainant has an Italian affiliated company, namely Siemens SpA, but that company is located in Milan, Italy. The Respondent has not provided evidence of its assertions beyond the letter of authority which, as explained is a private instrument with no other external verification. After the filing of the Complaint the website at the disputed domain name has an under construction sign.
It is the view of this Panel, that on the balance of probabilities the Respondent was not able to show that he has rights or legitimate interests over the disputed domain name.
The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trademark with a generic term added which can be seen as indicating the Complainant.
At the time of filing the Complaint, the Respondent was using the disputed domain name for a website related to elevators with the Siemens brand. The website at the disputed domain name also contained the trademark SIEMENS including its original color according to Annex 9 of the Complaint. Currently the disputed domain name informs users that it is under construction.
In the opinion of the Panel, the use made of the disputed domain name is deceptive. It is not at all clear whether the website to which the disputed domain name points is or is not connected with the Complainant. The copying of the Complainant’s trademark with its green color on the website at the disputed domain name gives the impression that the Respondent’s website is connected with the Complainant and indicates that the Respondent is well aware of the Complainant, its business and trademarks.
Considering the well-known character of the Complainant trademark (see Siemens AG v. Dorofeev, Konstantin,WIPO Case No. D2013-0923, Siemens AG v. Mr. Ozgul Fatih,WIPO Case No. D2010-1771 and Nokia Corporation, Siemens AG, Nokia Siemens Networks Oy v. Chen Fang Fang,WIPO Case No. D2008-1908), the material attached to the Complaint and the fact that the Panel has found that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Complainant has shown that the Respondent registered the disputed domain name in bad faith and has used it to attract Internet traffic to its own website, at the disputed domain name, for commercial gain by creating a likelihood of confusion that such website is connected to the Complainant.
As such, the Panel finds that the disputed domain name has been registered and is being used in bad faith satisfying the third limb of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: August 13, 2013
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