Complainant is SIEMENS AG of Munich, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
Respondent is Domain ID Shield Service CO., Limited of Kowloon, Hong Kong, China / Maksim SPD Chervinchuk of Kiev, Ukraine, represented by Andrii Raetskiy, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (“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 February 19, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2018, 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 Complainant on February 21, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 2018.
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 Respondent of the Complaint, and the proceedings commenced on March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Response was filed with the Center on March 14, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 3, 2018. 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
Complainant, Siemens AG, is one of the world’s largest electrical engineering and electronics companies. Complainant manufactures and is a supplier of systems and products in many areas, such as household appliances, automation and control, power, transportation, information and communications. Complainant is the owner of an International Registration for the SIEMENS mark that covers goods and services in 23 different International Classes (Registration No. 637074). This International Registration issued on March 31, 1995 and has been extended to more than 60 countries around the world, including Ukraine and Russian Federation.
Respondent is a founder and owner of a Ukrainian Limited Liability Company by the name of Europe Tek Ukraine. Respondent’s company is a reseller of household appliances in Ukraine. Respondent registered the disputed domain name in 2008 and is currently using the disputed domain name for a website that offers for sale Complainant’s SIEMENS branded household appliance products in Ukraine. Respondent is not an authorized reseller of SIEMENS products. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns and has used the SIEMENS mark for more than 150 years. Complainant maintains that on account of its longstanding use of the SIEMENS mark in connection with high quality goods and services, the SIEMENS mark is now one of the most well-known marks in the world. Complainant also contends that its SIEMENS products and services are sold in numerous countries around the world, including in Ukraine where Complainant has an official licensee for the sale of household appliances.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s SIEMENS mark because it contains the SIEMENS mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive geographic country code “ua” which refers to Ukraine increases the potential risk of confusion because consumers are likely to mistakenly believe that the disputed domain name is a country-related official online address of Complainant for SIEMENS products being sold in Ukraine.
Complainant argues that Respondent does not have any bona fide rights or legitimate interests in the disputed domain name because Respondent (a) is not in any way affiliated with or licensed by Complainant, and (b) has not used the disputed domain name with a bona fide offering of goods and services. Complainant asserts that Respondent is using the disputed domain name in connection with a website selling household appliances under the SIEMENS mark that suggests that Respondent is an official website of, or a website authorized by Complainant, when such is not the case. In that regard, Complainant notes that Respondent’s website at the disputed domain name features the SIEMENS mark in block letters in the identical house color of Complainant, “petrol blue” that Complainant has used for decades.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent knew or should have known of Complainant’s prior rights in the SIEMENS mark, given that the website at the disputed domain name prominently features Complainant’s SIEMENS mark in the same house color used by Complainant. Complainant also argues that Respondent registered the disputed domain name to prevent Complainant from adopting the SIEMENS mark in a corresponding domain name for Ukraine. Lastly, Complainant asserts that Respondent’s bad faith is established by Respondent’s use of the disputed domain name that consists of the SIEMENS mark in order to confuse consumers and disrupt Complainant’s business. B. Respondent
Respondent denies all of Complainant’s contentions.
Respondent admits that the disputed domain name is identical to Complainant’s SIEMENS mark. Respondent, however, contends that it registered the disputed domain name in 2008 and has used such legitimately since that time to sell genuine SIEMENS household appliances in Ukraine. Respondent maintains that while it is an unauthorized reseller of Complainant’s products, Respondent has legitimately obtained the SIEMENS products it resells in Ukraine and is legitimately and legally reselling original products that were distributed and sold in Ukraine by Complainant and its licensee. Respondent further argues that because Complainant has not objected to Respondent’s use of the disputed domain name for 10 years, the Complaint should be denied under the doctrine of laches.
Respondent contends that its registration and use of the disputed domain name to resell genuine SIEMENS products in Ukraine is legitimate in light of the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Respondent argues that it uses the disputed domain name for a website that only resells original SIEMENS household appliances which have been legally distributed and imported into Ukraine. Respondent further argues that its actions are legitimate because Respondent has used a disclaimer on the website at the disputed domain name that specifies that the website is not an official website of SIEMENS AG and that Respondent is merely a sales agent who works with official distributors.
Respondent argues that there has been no bad faith registration and use of the disputed domain name, particularly as Respondent has never registered any other domain names based on the SIEMENS mark and has never used the disputed domain name to mislead consumers that the disputed domain name is connected to Complainant. Respondent emphasizes that all products sold on or through the website at the disputed domain name are genuine SIEMENS products legally obtained by Respondent and that Complainant has provided no evidence that Respondent has taken any actions that would suggest that Respondent is selling non-genuine goods or has resold goods in a manner that have caused consumer complaints or other harm to Complainant or its reputation. Lastly, Respondent argues that because it registered and has owned the disputed domain name for 10 years, Complainant cannot assert that it was registered in bad faith. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Preliminary Issue: Respondent’s Claim of Laches
Respondent asserts that because Respondent registered the disputed domain name in 2008, Complainant is barred under the doctrine of laches from initiating a complaint against the disputed domain name. While the doctrine of laches is a common law equitable defense that seeks to prevent a party from ambushing someone else by failing to make a legal claim in a timely manner, the Policy contains no limitation period for making a claim, and a delay by a Complainant in bringing a complaint does not provide a defense per se under the Policy. As such, UDRP panels who have considered the issue have declined to specifically adopt concepts such as laches in the UDRP. See Section 4.17 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0”) and cases cited therein. Here, even in the absence of an explanation from Complainant, the Panel does not draw a negative inference from the mere delay in the filing of the Complaint.
That being said, the Panel considers that a delay would be relevant to its decision if there was some firm indication that Complainant had, explicitly or implicitly, consented to Respondent’s use of its trademark in the disputed domain name. It is notable that Respondent has provided no evidence that Complainant was even aware of Respondent’s registration and use of the disputed domain name for its website selling SIEMENS products, and there is no indication of any correspondence between Complainant and/or any representative of Complainant with Respondent to suggest or imply that Complainant may have approved of or condoned Respondent’s use of the SIEMENS mark in the disputed domain name. Without some material evidence, beyond conjecture, to indicate that Complainant approved of or condoned Respondent’s use of the SIEMENS mark in the disputed domain name, the Panel is not prepared to consider a bar against Complainant’s claims concerning the disputed domain name. B. Identical or Confusingly Similar
While Respondent admits that the disputed domain name is identical to Complainant’s SIEMENS trademark, the Panel notes that Complainant has established its prior tights in the SIEMENS mark, and that the disputed domain name is confusingly similar to Complainant’s SIEMENS mark as it incorporates the SIEMENS mark in its entirety at the head of the disputed domain name. The addition of the geographic country code “ua” does not distinguish the disputed domain name from Complainant’s SIEMENS mark and in fact increases the confusion by suggesting that the disputed domain name is related to Complainant and/or its goods and services for Ukraine. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the SIEMENS mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that offers genuine SIEMENS household appliance products for sale in Ukraine. There is no evidence or indication that Respondent has sold any products other than genuine SIEMENS products or that there have been any consumer complainants regarding the products sold by Respondent through the website at the disputed domain name. Thus, on its face it would appear that Respondent, while an unauthorized reseller of genuine SIEMENS products, could have a legitimate interest in the disputed domain name under the “Oki Data test” adopted by numerous UDRP Panels. See Oki Data Americas, Inc. v. ASD, Inc, supra; see also WIPO Overview 3.0 at section 2.8.
However, while reselling legitimately obtained genuine products could be seen as being a legitimate interest or use, Respondent here has taken the extra step of registering a domain name that on its face suggests a connection to Complainant, or which likely will be seen as an official domain name of Complainant for Ukraine, and then using such with a website that suggests a connection to Complainant and/or which makes it appear that the website is an official or authorized website for the sale of SIEMENS household appliance products in Ukraine. The home page of the website at the disputed domain name, and virtually every page on the website, prominently features at the top of each web page the SIEMENS mark in block letters and in the same “petrol blue” color typically used by Complainant. Moreover, the text on the home page of the website at the disputed domain (which is in Ukrainian) heightens the connection to Complainant by making numerous references to SIEMENS as a manufacturer, the history of SIEMENS and the SIEMENS household appliance products. The text includes numerous links and statements such as “SIEMENS home appliance online store,” “our online store,” “SIEMENS online store” and the like. There is even a webpage within the website entitled “about the Siemens company” that includes a photograph of a SIEMENS office building with text about the SIEMENS company, its history and the company’s approach to designing household appliance products. Notably, none of these pages make any reference to Respondent, Respondent’s Europe Tek Ukraine company, or to the fact that Respondent does not have any affiliation with or connection to Complainant. The one disclaimer that Respondent points to is buried at the very bottom of a difficult to find webpage within the website at the disputed domain name and merely states in small lettering at the end of a long paragraph of text that the website is not an official site of Complainant. Notably, the purported disclaimer does not appear on the home page of the website, on the information pages regarding SIEMENS or on any of the pages where SIEMENS products are being offered for sale.
Such actions by Respondent, in their totality, appear to have been designed to suggest that Respondent’s website at the disputed domain name is affiliated with, connected to or authorized by Complainant, when such is not the case. Indeed, a consumer visiting Respondent’s website at the disputed domain name would likely believe that the disputed domain name and website are somehow connected to or authorized by Complainant, given (i) the prominent use of SIEMENS in the disputed domain name, (ii) the numerous SIEMENS indicia and references used by Respondent throughout the website at the disputed domain name, (iii) the lack of any references to Respondent and its identity on the website, and (iv) the lack of anything material or prominent on the website dispelling the connection between Respondent and Complainant. Thus while Respondent may have a legitimate basis for reselling legitimately sourced SIEMENS household appliance products in Ukraine, it is not legitimate for Respondent to essentially impersonate or suggest some form of connection, sponsorship or endorsement by Complainant for purposes of selling products – even if they are genuine SIEMENS products. Respondent is not connected to Complainant and taking measures to misleadingly imply an affiliation with Complainant is not a legitimate or fair use even under the “Oki Data Test”. WIPO Overview 3.0 at sections 2.5.1 and 2.8.2.
Given that Complainant has established with sufficient evidence that it owns rights in the SIEMENS mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s SIEMENS mark with the geographic indicator “ua”, which stands for Ukraine. Given that Complainant promotes and sells its SIEMENS products in numerous countries around the world, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a website that is authorized to sell Complainant’s SIEMENS products in Ukraine. This is particularly so given that Respondent, as noted above, has designed the website that appears to be connected to Complainant or to be an official or authorized website of Complainant for Ukraine. It is again worth noting that Respondent’s purported disclaimer is buried deep within Respondent’s website and is positioned as the last sentence at the end of a long paragraph of small text at the very bottom of a single webpage within the website – and not on the homepage or any of the other major pages of the website. Such an inconspicuous disclaimer undermines any claim by Respondent that it took reasonable steps to avoid passing itself off as related to Complainant. Simply put, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain name, which is based on Complainant’s SIEMENS mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, section 3.1.4 (and cases cited therein).
Accordingly, the Panel finds that Complainant succeeds under this element 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 Complainant.
Georges Nahitchevansky
Sole Panelist
Date: April 16, 2018
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