The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Senol Karakaya of Istanbul, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with IHS Telekom, Inc. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2016. On August 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 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 and noting that the language of the registration agreement is Turkish.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Turkish is the language of the registration agreement, on September 12, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On September 13, 2016, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any comment regarding the language of the proceeding.
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 September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. The Respondent did not submit any 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, and duly renewed, whose details of registration have both been provided to the Panel.
The Respondent is an individual domiciled in Turkey.
The disputed domain names and were registered by the Respondent respectively, on April 5, 2011 and February 26, 2010.
At the time of the decision, the disputed domain names resolve to websites in Turkish, which purport to provide repair services for products of the Complainant. Provided screenshots of the websites at the disputed domain names in Annex 7 of the Complaint show that the Respondent prominently uses the Complainant’s SIEMENS word mark in various forms to promote its offered technical services, which appear not to be limited to products of the Complainant. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends the disputed domain names are identical or confusingly similar to its renowned SIEMENS trademark as they both incorporate the said trademark in its entirety, in between a descriptive geographical indication and a descriptive word.
Secondly, the Complainant puts forward that the Respondent lacks rights or legitimate interests in the disputed domain names. To begin with, the Complainant states that it has no connection with the Respondent and has at no time consented to the use of its well-known SIEMENS trademark by the Respondent, nor to the registration of any domain name incorporating the said trademark. The Complainant further claims that the Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services and that, to the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain names. The Complainant also alleges that the Respondent does not make any legitimate noncommercial or fair use of the disputed domain names and that there is no element suggesting that the Respondent does not aim to mislead online consumers.
Thirdly, the Complainant alleges that the disputed domain names have been registered and are being used in bad faith. The Complainant claims that the Respondent registered the disputed domain names in order to capitalize on the reputation of the SIEMENS trademark and to prevent the Complainant from adopting the SIEMENS trademark in corresponding domain names. Finally, the Complainant states that the disputed domain names are being used in bad faith as they resolve to websites prominently displaying the Complainant’s SIEMENS trademark and purporting to offer services which are in direct competition with the services offered by the Complainant under its SIEMENS trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) is to ensure fairness in the selection of the language 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 in the event translations are required and other relevant factors.
In the present case, the registration agreement of the disputed domain names is in Turkish. The Complainant filed the Complaint in English and requested for English to be the language of the proceeding on the grounds that (i) the Complainant is a German-based entity which is not able to communicate in Turkish without incurring significant expenses and delays and it would be unfair to impose such expenses on the Complainant; (ii) English is the most usual language worldwide for business, negotiation and administrative matters as well as Internet and computer-related matters; (iii) English is globally known and neutral with regards to both Parties’ country of domicile or incorporation.
The Respondent failed to submit, in either language, any comment regarding the language of the proceeding even though it was invited to do so in both Turkish and English. The Respondent also failed to submit any objection regarding the Complainant’s request that the language of the proceeding be English.
Therefore, in light of all 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 also 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 names be transferred to the Complainant:
(i) the disputed domain names are 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 disputed domain names;
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
In the Panel’s opinion, the Complainant has demonstrated clear trademark rights on the SIEMENS trademark. The Panel, which finds that the disputed domain names both incorporate the said trademark in its entirety, concurs with the opinion of prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for the purposes of the Policy (See e.g., Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903).
In addition, the Panel also concurs with the finding of previous UDRP panels that the addition of geographical terms to a trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy (see Playboy Enterprises International Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768). In the present case, the Panel finds that the Complainant’s trademark is wholly incorporated together with the respective geographical terms “Besiktas” (which is the name of a district in Istanbul) and “Etiler” (which is the name of a neighborhood in Besiktas) in the disputed domain names.
It is also well-established in prior decisions under the UDRP that the mere addition of descriptive and nondistinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity (see, e.g., TPI Holdings Inc. v. Carmen Armengol,WIPO Case No. D2009-0361). The Panel finds that the Complainant’s SIEMENS trademark is fully incorporated in both disputed domain names together with the descriptive Turkish word “servis”, which means “service”.
For the purposes of the present comparison, the Panel agrees with the common 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 extensions “.net” and “.com” of the disputed domain names irrelevant here.
The Panel consequently finds that the disputed domain names are 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 names.
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 names. 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 names by providing evidence in support of a finding 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 names or a name corresponding to the domain names 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 names, 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 names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Given the absence of response to the Complaint, and based on the evidence submitted in the available record, 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 rights in the SIEMENS trademark 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 names. The Panel consequently deems that the Complainant established a prima facie case that the Respondent does not have rights in the disputed domain names.
According to paragraph 2.3 of the WIPO Overview 2.0, it is the consensus view among UDRP panelists that “a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements”. It is stated that “these requirements normally include the actual offering of goods and services at issue, 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”.
In the Panel’s view, these requirements also apply mutatis mutandis to repair services offered for products of third parties if the trademarks of these products are part of a domain name.
The respective websites at the disputed domain names both display the Complainant’s trademark and make use of the trade dress associated with the Complainant. The Panel finds, in the absence of any authorization to do so from the Complainant, that the Respondent is misrepresenting itself as being somehow related to the Respondent. Futhermore, the websites at the disputed domain names do 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 names (see, e.g., Spigen Korea Co. Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145).
In light of the above, considering that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names 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 said rights or legitimate interests, the Panel therefore finds 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 names were registered and are 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 it very unlikely that the Respondent was unaware of the Complainant’s trademark at the time of registration of the disputed domain names. As a result, the Panel finds that the Respondent could not have unintentionally incorporated the Complainant’s trademark in the disputed domain names and therefore, has registered the disputed domain names in bad faith in order to capitalize on the reputation of the Complainant’s trademark (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).
Secondly, it is the Panel’s view that the Respondent deliberately tried to conceal the lack of relationship with the Complainant, in order to mislead Internet users searching for an authorized repair service for the Complainant’s products for the Respondent’s commercial gain. In the present case, the Panel finds that the disputed domain names are being used in connection with an offer of repair services for the Complainant’s products in Turkey in order 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 corresponding websites at the disputed domain names are in some way associated with the Complainant. Such use in bad faith appears even more evident to the Panel, as the said websites reproduce the Complainant’s trademark displayed in the exact same colour as that generally used by the Complainant.
Accordingly, the Panel finds that the Complainant has 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 names and be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: October 21, 2016
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