The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Murat Kaya of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Turkish is the language of the registration agreement, on August 24, 2016, the Center requested that the Parties submit their comments on the language of the proceedings. On August 26, 2016, the Complainant submitted its request for English to be the language of the proceedings. The Respondent did not submit any comment regarding the language of the proceedings.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Turkish and the proceedings commenced on August 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2016.
As the Respondent expressed its will to transfer the disputed domain name to the Complainant in several emails between August 24 and September 1, 2016, the proceeding was suspended on September 1, 2016 for settlement negotiations. As the settlement negotiations did not result in an agreement between the Parties, the proceeding was recommenced on September 20, 2016 upon request of the Complainant. The Response due date was extended to October 9, 2016.
The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on October 10, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 12, 2016. 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 German company incorporated in 1847 which has grown to become a world leader in the field of engineering and electronics. The Complainant manufactures and sells numerous products such as household appliances under the trademark SIEMENS.
The Complainant owns numerous SIEMENS trademarks, inter alia, the European Union trade mark No. 004240263, registered on March 28, 2006 and the International trademark No. 637074 (which notably designates Turkey) registered on March 31, 1995, whose details of registration have both been provided to the Panel.
The Respondent is an individual person domiciled in Turkey.
The disputed domain name was registered by the Respondent on August 10, 2012.
The disputed domain name is currently inactive. However, the Complainant submitted evidence showing that the disputed domain name resolved to a website, which provided repair services for products of the Complainant. The website used the Complainant’s SIEMENS mark in various forms including in the distinctive colour used by the Complainant, to promote technical services. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is identical or at least confusingly similar to its renowned SIEMENS trademark as it contains the trademark in its entirety with the mere addition of the hyphenated descriptive, generic and/or non-distinctive Turkish words.
Secondly, the Complainant puts forward that the Respondent lacks rights or legitimate interests in the disputed domain name. To begin with, the Complainant states that it has at no time consented to the use of its SIEMENS trademark, or to registration of any domain name incorporating its SIEMENS trademark, by the Respondent. The Complainant further claims that, to the best of its knowledge, the Respondent is not generally known by the disputed domain name and does not use the disputed domain name in connection with a bona fide offer of goods or services. The Complainant finally alleges that the Respondent does not make any legitimate noncommercial or fair use of the disputed domain name and that there is no element suggesting that the Respondent does not aim at misleading online consumers.
The Complainant further alleges that the disputed domain name has been registered and is being used in bad faith. Firstly, the Complainant claims that the Respondent registered the disputed domain name in order to capitalize on the alleged reputation of the SIEMENS trademark and to prevent the Complainant from adopting the trademark SIEMENS in a corresponding domain name. Finally, the Complainant alleges that the disputed domain name is being used in bad faith as it is used in connection with a website offering services in the field of goods covered by the SIEMENS trademark, while utilizing the Complainant’s trademark and coloration scheme. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The Complaint was filed in English. It is noted that the language of the registration agreement for the disputed domain name is Turkish. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of the language of the proceedings, by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of a delay in the proceedings where translations are required and other relevant factors.
The Complainant has submitted a request that English be the language of the proceeding on the grounds that i) the Complainant is a German-based entity which is not in a position to conduct such proceedings in Turkish without incurring significant expenses and delays and it would be unfair to impose such expenses on the Complainant; ii) the English language is the most usual language worldwide for business, negotiation and administrative matters as well as Internet and computer-related matters; iii) the English language is globally known and neutral with regards to both Parties.
The Respondent did not submit any objection to the Complainant’s request that English be the language of the proceedings, even though the Center, when notifying the Complaint to the Respondent, indicated that the proceeding would take place in the requested language of the Complainant should the Respondent not object to such request. The Respondent also failed to submit a Response to the Complaint in either language.
However, the Complainant is not able to communicate in Turkish and therefore, if the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. On the contrary, it is apparent from the written communications exchanged between the Parties with respect to a possible voluntary transfer of the disputed domain name, that the Respondent is capable of communicating in English.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case (See e.g., eBay Inc and PayPal Inc v. Noorinet and Linecom,WIPO Case No. D2016-0045). 6.2. Substantive Issues
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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. Identical or Confusingly Similar
In the Panel’s opinion, the Complainant has demonstrated clear rights to its SIEMENS trademark. The Panel finds that the disputed domain name incorporates the entirety of the SIEMENS trademark with the mere addition of the Turkish words “beyazesya” and “servis” which respectively mean “appliances” and “service”. It is well-established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity. In the present case, in the Panel’s opinion, the Turkish words “beyazesya” and “servis” are clearly descriptive and non-distinctive (See e.g., Siemens AG v. Private Registrations Aktien Gesellschaft,WIPO Case No. D2011-1163) and, rather than distinguishing the disputed domain name from the Complainant’s trademark, enhance its similarity (See e.g., Siemens AG v. Client,WIPO Case No. D2015-2035).
For the purposes of the present comparison, the Panel agrees with the well-established view under the UDRP that generic Top-Level Domain (“gTLD”) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (See e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc,WIPO Case No. D2016-1236) and considers the gTLD extension “.net” to be irrelevant in the present case.
The Panel consequently finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the Respondent may then, inter alia, demonstrate rights or legitimate interests in the disputed domain name by proving that one of the following circumstances of paragraph 4(c) of the Policy is applicable to the case:
(i) before any notice of the dispute, the Respondent used, or made 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 consumers or to tarnish the trademark or service mark at issue.
Given the absence of a reply to the Complaint, and based on the evidence submitted in the case file, for example, that the Complainant had previously registered several SIEMENS trademarks as well as the domain name , the Panel deems that the Complainant has proved their earlier and lawful rights in the SIEMENS trademarks and accepts the Complainant's claim that the Respondent was never granted any right to use the SIEMENS trademark in relation to the disputed domain name. The Panel consequently deems that the Complainant established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Furthermore, especially as the website at the disputed domain name used to reproduce the Complainant’s trademark at the time of the Complaint and did not display any element as to clarify or disclaim the relationship between the Respondent and the Complainant, the Panel finds no other basis upon which to find any rights or legitimate interests relating to the Respondent in the disputed domain name (See e.g. Spigen Korea Co. Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145, May 13, 2016).
In addition, the current passive holding of the disputed domain name does not give rise to any rights or legitimate interests (See e.g., CLK Bogazici Elektrik Perakende Satis A.S. / CLK Enerji Yatirim Anonim Sirketi v. Ahmet Ozturk,WIPO Case No. D2016-0093).
In light of the above, considering that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name while given the opportunity under paragraph 4(c) of the Policy, and that the Panel has not found any other basis upon which to recognize any of the said rights or legitimate interests, the Panel considers that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant claims that the disputed domain name was registered and is being used in bad faith.
Firstly, as the Complainant’s SIEMENS trademark is well-known and largely used worldwide, including in Turkey, the Panel finds very implausible that the Respondent was unaware of the Complainant’s trademark at the time of registration of the disputed domain name. As a result, the Panel finds that the Respondent could not have unintentionally incorporated the Complainant’s trademark in the disputed domain name and, therefore, has registered the disputed domain name in bad faith (See e.g., Siemens AG v. Client,WIPO Case No. D2015-2035; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). Furthermore, in the Panel’s opinion, the behaviour of the Respondent (who did not proceed with the transfer of the disputed domain name to the Complainant during the suspension period after making indication of its intention to do so), further indicates that the disputed domain name was registered in bad faith.
Secondly, the Panel finds that the disputed domain name was used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SIEMENS trademark, leading Internet users to believe that the website at the disputed domain name is in some way associated with the Complainant. Such use in bad faith appears even more evident to the Panel, as the website used to reproduce the Complainant’s trademark displayed in the exact same colour as that generally used by the Complainant. Furthermore, the fact that the website connected to the disputed domain has been subsequently deactivated does not preclude the Panel’s findings (See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii). 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.
Nathalie Dreyfus
Sole Panelist
Date: October 26, 2016
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