The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is Yang Jun Yang, Yang Jun of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2018, 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. On May 25, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 28, 2018. The Respondent did not comment on 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 in English and Chinese of the Complaint, and the proceedings commenced on May 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 28, 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
The Complainant is an electrical engineering and electronics company with operations in many countries, including China. The Complainant is the owner of international trademark registration no. 637074 for SIEMENS, registered on March 31, 1995 and designating more than 60 jurisdictions worldwide, including China. The registration specifies goods and services in multiple classes including electrical household appliances in class 7. The Complainant has registered multiple domain names, including and others such as , that it uses in connection with its official websites where it provides information about itself and its products.
The Respondent, an individual ostensibly located in China, is the registrant of the disputed domain name.
The disputed domain name was registered on March 30, 2018. It resolved to a website in English that prominently displayed the SIEMENS trademark in the same font and color as it appears on the SIEMENS official website. It displayed a photograph of the Complainant’s stand at a recent trade fair in Germany and invites Internet users to request a quotation for particular electrical products, some produced by the Complainant and others produced by the Complainant’s competitors. At the date of this decision, the disputed domain name no longer resolves to any active website. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s SIEMENS trademark. The disputed domain name contains that trademark, followed by the descriptive addition “-electrical” and the generic Top-Level Domain (“gTLD”) “.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not and has never been one of the Complainant’s representatives, employees or one of its licensees nor otherwise authorized to use the SIEMENS trademark. The Complainant does not have any connection with the Respondent. The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known with the domain name. The Respondent’s website offers to supply service for Siemens products and third party products. The Respondent is an unauthorized reseller and the prominent use of the SIEMENS trademark in the house color on its website indicates to visitors an official authorization which has notbeen provided.
The disputed domain name was registered and is being used in bad faith. The Respondent knew or should have known about the Complainant’s earlier rights in the SIEMENS trademark. In deliberately registering the disputed domain name, the Respondent intended to use the strong worldwide reputation of the Complainant’s SIEMENS trademark in order to confuse the public and to cause damage to the Complainant by disrupting its business. The website is designed in a manner that it appears to be connected to the Complainant or to be an official or authorized website of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant is a German entity and not in a position to conduct this proceeding in Chinese without significant expenses and delays in translating the Complaint and the Annexes and that it is fair to choose the globally known English language as a neutral language for both parties. The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolves is in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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
Based on the evidence provided, the Panel finds that the Complainant has rights in the SIEMENS trademark.
The disputed domain name wholly incorporates the Complainant’s SIEMENS trademark. In addition, it contains the dictionary word “electrical”, separated from the SIEMENS trademark by a hyphen. A dictionary word is generally incapable of dispelling confusing similarity from a trademark for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The hyphen is mere punctuation and far too minor to dispel confusing similarity as the SIEMENS trademark remains clearly recognizable in the disputed domain name.
The disputed domain name also contains the gTLD suffix “.com”. A gTLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s SIEMENS trademark. The disputed domain name resolved to a commercial website that not only offered for sale the Complainant’s products but also offered for sale the products of the Complainant’s competitors. The Complainant states that it has no connection with the Respondent but this lack of relationship is not disclosed on the website. These circumstances show that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor is this a legitimate noncommercial or fair use of the disputed domain name. Further, as at the date of this decision, the disputed domain name no longer resolves to any active website. The Panel does not find that the Respondent’s use falls within the first or third circumstance of paragraph 4(c) of the Policy.
The Respondent’s name is “Yang Jun Yang” or “Yang Jun”, not “siemens” or “electrical”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online 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 [the Respondent’s] website or location.”
The Respondent registered the disputed domain name in March 2018, many years after the Complainant obtained its trademark registration, including in China. The disputed domain name wholly incorporates the Complainant’s SIEMENS trademark, which is not a dictionary word and has no other meaning. The disputed domain name combines the SIEMENS trademark with the word “electrical”, which describes the Complainant’s products. The website to which the disputed domain name resolved offered for sale the Complainant’s electrical products, among others. This indicates to the Panel that the Respondent was aware of the Complainant and its trademark at the time that it registered the disputed domain name and that it deliberately registered the disputed domain name in bad faith.
The Respondent used the disputed domain name, which combines the Complainant’s SIEMENS trademark and a word that describes the Complainant’s products, with a website that offers for sale those products. The website to which the disputed domain name resolved, displayed the Complainant’s trademark in the same font and color used on the Complainant’s official website and offered for sale the Complainant’s electrical equipment, as well as that of the Complainant’s competitors. Given these findings and those at section 6.2B, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on those websites.
The Panel notes that the disputed domain name no longer resolves to any active website as at the date of this decision. The Panel does not consider that this fact alters its conclusion; rather, the recent change of use may constitute further evidence of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: July 1, 2018
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