The Complainant is Siemens Aktiengesellschaft of Munich, Germany, represented by Beiten Burkhardt, Russian Federation.
The Respondent is OOO “Kvad Elektrik” / Roman R Gasparyan of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR 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 12, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 30, 2013, 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 31, 2013.
The Center verified that the Complaint together with the amended 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 January 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2014.
The Center appointed Ladislav Jakl as the sole panelist in this matter on January 31, 2014. 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 the right holder of some trademarks, which include the designation “Siemens”, in particular International trademark SIEMENS No. 504324, which is protected since 1986 (ROMARIN database-Annex 9 to the Complaint) and International trademark SIEMENS No. 637074, which is protected for many countries including the Russian Federation, since 1995 (ROMARIN database-Annex 10 to the Complaint) . Additionally the Complainant is the right holder of many other international trademarks, which are combined with the designation “Siemens”, for example SIEMENS CLIMATE SOLUTIONS No. 1043433, SIEMENS SCI No. 1101480, SOLUTION PARTNER SIEMENS No. 1179018 (Annex 10 to the Complaint).
The disputed domain name was registered on October 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks as it incorporates the trademark SIEMENS No. 504324 and trademark SIEMENS No. 637074. The second part of the disputed domain name “russia” means the name of the country and thereby is indicative of a connection between the Complainant and said country and therefore, in the disputed domain name, does not have independent distinctiveness and is a weak part of the disputed domain name. These two parts of the disputed domain name are separated through the hyphen “-”, which makes the relevant trademarks more recognizable as such within the disputed domain name. The Complainant moreover argues that the applicable generic Top-Level Domain (“gTLD”) suffix “.com” is only a technical requirement of registration and should be disregarded under this confusing similarity test. The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that SIEMENS trademarks are well-known worldwide and strongly associated solely with the Complainant that has been using SIEMENS trademarks extensively for decades throughout the world and in particular in the Russian Federation. It is confirmed by registration of the trademark SIEMENS No. 504324 in 1986. Besides this, the Complainant is before 2002 in the Russian Federation mostly represented by Siemens LLC, where it actively implements developments and sells goods of Siemens under SIEMENS trademarks related to many sectors of economy, including railway transport (Annexes 13 and 14 to the Complaint). The Respondent’s company was registered long after in 2008 (Annex 2 to the Complaint) and the disputed domain name was registered as late as October 21, 2011. Moreover, the Complainant introduces that on the website “www.” the Respondent offers for sale goods of Siemens (Annex 6 to the Complaint). The Complainant has not licensed the right to the Respondent to use the trademarks SIEMENS in the disputed domain name and therefore there is no relevant license agreement between the Complainant and the Respondent. The Respondent is not the authorized distributor of the Complainant and therefore there is no relationship between the Respondent and the Complainant at all. Moreover, the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product available at the website.
Furthermore, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith since the Respondent is not an authorized dealer of the Complainant and it has engaged in a pattern of conduct by registering the disputed domain name containing the Complainant´s well-known trademarks, attempting so to attract, for commercial gain through the sale of products relating to Siemens products, Internet users to its website by creating confusion. The Respondent did not at any point identify itself as a separate entity from the Complainant and consumers were therefore likely to be confused into thinking that the goods offered therein were offered by the Complainant. This confusion increases through the content of the website, because consumers could download the thousands of documents as manuals and handbooks, which refer to Siemens products and moreover such manuals contain the original designation “Siemens” and the disputed domain name (Annexes 19 and 20 of the Complaint). That is why the disputed domain name creates the likelihood of initial user confusion as to the source, sponsorship, affiliation or endorsement of Siemens AG. The Complainant concludes that the criteria of the Policy paragraph 4(b)(iv) are met and the Respondent has registered and used the disputed domain name in bad faith in violation of the Policy paragraph 4(a)(iii).
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name incorporates the Complainant’s trademarks SIEMENS No. 504324 and No. 637074 and the geographic term “russia”. Such a combination of the Complainant’s trademark and geographic term does not avoid the confusing similarity (Accor v. Vu Duy Truong,WIPO Case No. D2011-0093; Accor v. Lee Dong Youn,WIPO Case No. D2008-0705; and Accor S.A. v. .,WIPO Case No. D2007-1257). The mere addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is irrelevant because the suffix is not a distinctive element when assessing whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks (Accor v. Noldc Inc,WIPO Case No. D2005-0016; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Mere addition of a descriptive term by way of prefix to a complainant’s trademarks does not adequately distinguish the domain names from the trademark pursuant to the Policy, paragraph 4(a)(i). See Wal -Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F. Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717; Sanofi-Aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2008 -1483; Sanofi-Aventis v. N/A, WIPO Case No. D2009-0705; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004. Also the hyphen between the terms “siemens” and “russia” is not a distinctive element.
For all the above cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:
(i) before the Respondent obtained any notice of the dispute, had used of, or had made demonstrable preparations to use, the disputed 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 individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non commercial 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 Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy, which the Respondent has not rebutted. The Complainant has proved that it has exclusive rights for the trademark SIEMENS and submitted that no license, authorization respectively consent to the Respondent was granted to use SIEMENS in the disputed domain name. Mere registration of the disputed domain name may not of itself confer rights or legitimate interests in the disputed domain name (Terroni Inc. v. Gioacchino Zerbo,WIPO Case No. D2008-0666; Société Nationale des Chemins de Fer Français v. RareNames, Inc., RareNames WebReg and RN WebReg,WIPO Case No. D2008-1849; St Andrews Links Ltd v. Refresh Design,WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia,WIPO Case No. D2010-0490).
The Complainant’s trademarks SIEMENS are well-known worldwide and are strongly associated with the Complainant. The Respondent is not the authorized distributor of the Complainant and therefore there is no relationship between the Respondent and the Complainant. The Respondent did not at any point identify itself as a separate entity from the Complainant and Internet users are therefore likely to be confused into thinking that the goods offered at the website are offered by the Complainant. The Panel notes that the site doesn’t accurately and prominently disclose the Respondent’s relationship with the Complainant. Therefore, the Oki Data principles do not apply in this case (see OkiData Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Moreover, the Complainant has proved (Annex 6 to the Complaint) that on the website “www.” the Respondent offers for sale goods of Siemens. It is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing of the Complainant’s trademark and that the disputed domain name clearly alludes to the Complainant. As it appears on Annex 6 to the Complaint, the Respondent is using the disputed domain name to offer for sale goods bearing the Complainant’s trademarks. The Panel accepts the arguments of the Complainant that the Respondent’s use of the disputed domain name to misdirect Internet users is not a bona fide offering of goods or services, and therefore does not constitute a legitimate noncommercial or fair use of the disputed domain name under the Policy (Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both bad faith registration and use. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 his website or of a product or service on that website or location.
The Panel accepts the arguments of the Complainant that the disputed domain name is being used in bad faith, as the disputed domain name was registered in bad faith since at the time of registration the Respondent had knowledge of the Complainant’s well-known trademarks SIEMENS. The disputed domain name was registered on October 21, 2011, while the Complainant’s trademarks were registered in 1986 (Annex 9 to the Complaint). The Respondent registered and is using the disputed domain name in bad faith since the Respondent is not an authorized dealer of the Complainant, attempting so to attract, for commercial gain through the sale of products relating to Siemens products, Internet users to its website by creating confusion. The Panel finds on balance that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name and disrupt the business of the Complainant. The disputed domain name creates the likelihood of confusion as to the source, sponsorship, affiliation or endorsement with the Complainant’s mark. Moreover, as it appears in Annex 6 to the Complaint, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product available on that website.
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Date: February 4, 2014
Full & Egal Universal Law Academy