The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is shadow.of.vodoo@ of Hannover, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2013. On November 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 19, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant, headquartered in Berlin and Munich, is one of the world’s largest electrical engineering and electronics companies. Founded more than 150 years ago, it is today active in the information and communications, medicine, automation and control, power and transportation industries, and provides its goods and services to customers in 190 countries, including the Islamic Republic of Iran.
The Complainant is registered owner of numerous trademarks for SIEMENS, inter alia Community trademark No. 4240263 SIEMENS, registered on March 28, 2006, and International registration No. 637074 SIEMENS, registered on March 31, 1995 and covering among other countries the Islamic Republic of Iran (hereinafter referred to as the “SIEMENS Marks”). Both trademarks cover numerous goods and services in various classes. The SIEMENS Marks have already been found to have “international reputation” and to be “well-known in many countries” (cf. Siemens AG v. Mr. Ozgul Fatih,WIPO Case No. D2010-1771; Nokia Corporation, Siemens AG, Nokia Siemens Networks Oy v. Chen Fang Fang,WIPO Case No. D2008-1908).
The disputed domain name was registered on September 5, 2012 and is used in connection with a website referring to the Islamic Republic of Iran and offering the Complainant’s products for sale. The website is provided in English and Arabic. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the famous SIEMENS Marks, which, by virtue of long and extensive use, belong to the best known trademarks in the world today, are well recognized as a symbol of the highest quality of the concerned goods and services and are associated exclusively with the Complainant. The Complainant argues that the public will automatically recognize the mark SIEMENS, which is contained as such in the disputed domain name, and will associate the disputed domain name with the Complainant, that the disputed domain name wholly incorporates the SIEMENS Marks in addition to the letters “maad”, which do not significantly alter the character of the disputed domain name as being one which is confusingly similar to the SIEMENS Marks, that the ordinary Internet user probably considers the additional letters “maad” as an acronym due to the fact that acronyms are often used as descriptive references to a product or serial number in the field of industrial automation addressed by the websites of the Respondent, and that for trade circles with knowledge of the Arabic transliterated language “maad” would be understood as a descriptive reference to “made” as “maad” seems to mean in English “made”.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it is not and has never been one of the Complainant’s representatives, employees or one of its licensees or is otherwise authorized to use the SIEMENS Marks, as the Respondent is not making a bona fide offering of goods or services, and as 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 at issue. In this context, the Complainant states that the Respondent’s websites attempt to imitate the setup and design of the Complainant’s websites and suggest that they are provided by a company named “Siemens Maad Co.”, claiming that “Siemens Maad Co.” is “one of the most well-known distributors of low voltage products and industrial automation of SIEMENS of Germany”, while such company does in fact not exist.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that it is obvious that the Respondent had knowledge of the Complainant’s trademarks, which have been famous for decades throughout the world and that this is already emphasized by the fact that the Respondent has used the identical colors petrol blue for the graphic representation of the mark SIEMENS and has also used the color petrol blue as a background in relation to its products. With regard to bad faith use, the Complainant argues that the Respondent intended to use the SIEMENS Marks’ strong reputation in order to confuse the public and to cause damage to the Complainant by disrupting its business, that it intentionally attempts to attract Internet users to its 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, that the Respondent’s website suggests that the goods and services are offered by an Iranian (non-existing) distributor, Siemens Maad Co., that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark SIEMENS in a corresponding domain name, and that the copying of the Complainant’s trademark with its petrol blue color on the website at the disputed domain name provides the false impression that the Respondent’s website is connected with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; 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. Identical or Confusingly Similar
The disputed domain name fully incorporates the well-established SIEMENS Marks in which the Complainant has exclusive rights.
In the view of the Panel, the mere addition of the letters “maad” following the Complainant’s trademark does not eliminate the similarity between the SIEMENS Marks and the disputed domain name, as the word “Siemens” at the beginning of the disputed domain name is the predominant part of the disputed domain name and the additional letters “maad” are not sufficient to hinder a finding of confusing similarity. Furthermore, it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of additional letters (cf. Microsoft Corporation v. Registrate Co.,WIPO Case No. D2003-0156; TRS Quality, Inc. v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-0630).
Furthermore, it is well established that the generic Top-Level Domain is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Claim No. 0094392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095). Irrespective of the question whether or not the Respondent has in fact sold the Complainant’s products, the Respondent has, according to the documents available to the Panel, at least failed to disclose its relationship to the Complainant and therefore, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the SIEMENS Marks as it states on its website that – true or not – it is a distributor of the Complainant’s products. It is therefore inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the SIEMENS Marks.
As to bad faith use, by fully incorporating the SIEMENS Marks into the disputed domain name and by using such domain name in connection with a website offering the Complainant’s products for sale without accurately and prominently disclosing the Respondent’s relationship with the Complainant, the Respondent is misleading Internet users into thinking that his business is in some way connected to, sponsored by or affiliated with the Complainant or that his business or his activities are approved or endorsed by the Complainant. The Respondent therefore was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) 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.
Brigitte Joppich
Sole Panelist
Date: January 1, 2014
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