The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is Basile Fattal Babymaxi of Montpellier, France. 2. The Domain Names and Registrar
The disputed domain names and are registered with OVH OVH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2019. On February 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center has also indicated to the Complainant that the language of the Registration Agreement was French, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceeding.
The Complainant filed an amended Complaint and a request for English to be the language of proceeding on February 27, 2019.
On February 28 and March 2, 2019, the Respondent sent emails in English to the Center asking for information regarding the UDRP procedure.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2019.
On March 6, 2019, the Respondent sent an email to the Center stating that he was unable to delete the domain from his account. On March 6, 2019, the Center sent the possible settlement email to the Parties. As the Complainant did not request the suspension of the proceeding, the proceeding continued. On March 7, 8 and 11, 2019, the Respondent sent several emails to the Center, asking if he had to give up his domain names.
In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. On March 27, 2019, the Complainant sent an email to the Center asking if the Respondent had filed a Response and if not, whether a Panel had been appointed. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on March 27, 2019. On March 27 and 28, 2019, the Respondent sent emails to the Center asking if he missed a deadline. On March 28, 2019, the Respondent filed a late Response without having expressly requested an extension of deadline to do so, as set out in the Rules, paragraph 5(b).
The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 3, 2019. 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 one of the world’s largest electrical engineering and electronic companies, which provides its services in 190 countries, notably in the mobility area.
The Complainant owns numerous trademarks consisting in whole or in part of the term SIEMENS, such as the International Trademark Reg. No. 637074, registered on March 31, 1995 under classes 1, 3, 5-12, 14, 16, 17, 20, 21, 28, 35-38, 40-42 and whose scope of protection notably extends to France.
By virtue of long and extensive use, the trademark SIEMENS is a famous trademark that enjoys an excellent reputation on a worldwide basis.
The Respondent registered the domain names and on December 7, 2017 (the “disputed domain names”). These domain names do not lead to any active website. 5. Parties’ Contentions A. Complainant
The Complainant first argues that the disputed domain names and are confusingly similar to its trademark SIEMENS as they entirely incorporate this trademark, followed by the descriptive term “mobility”. As a result, users will believe the disputed domain names to be at least associated to the Complainant in the field of mobility services.
The Complainant then affirms that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not and has never been one of its representatives, employees or licensees and has never been authorized to use the trademark SIEMENS. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services as these domain names do not lead to any active website. Furthermore, the Respondent is not known under the name “SIEMENS”.
The Complainant finally considers that the disputed domain names have been registered and are being used in bad faith. Considering the strong reputation of the trademark SIEMENS, the Respondent knew or should have known about the Complainant’s earlier rights on the trademark SIEMENS. In deliberately registering the disputed domain names and , the Respondent intended to use the strong reputation of the trademark SIEMENS in order to confuse the public and disrupt the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions within the deadline set to March 26, 2019, and did not request any extension to file his response, as invited by the Center. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(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.
Prior to turning to the merits of the case, the Panel however has to address a formal issue regarding the language of the proceedings. A. Language of the proceedings
The Complaint was filed in French on February 22, 2019.
On February 27, 2019, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain names was French. The Center invited the Complainant to provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in English, to submit the Complaint translated in French or a request for English to be the language of the proceedings.
On February 27, the Complainant requested English to be the language of the proceedings based on the following grounds: English is the most common language, and the Respondent registered domain names which contain the English term “mobility”, thus demonstrating a certain level of command of the English language. Although the Respondent did not formally accept or oppose English to be the language of the proceedings within the deadline allocated to it by the Center, the Respondent sent several emails to the Center on February 28, 2019, March 6 and 8, 2019, all in English. As a result, it seems clear that the Respondent has a sufficient level of command of the English language to proceed in English.
Consequently, the Panel accepts the Complainant’s request, and hence the proceedings shall be conducted in English. B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous trademarks throughout the world consisting of the term SIEMENS.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises,WIPO Case No. D2007-1629). Such is the case here.
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive. The Panel finds these elements are present here.
The applicable generic Top-Level Domain (“gTLD”) suffix, in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a merely descriptive term such as “mobility” does not avoid confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant is the owner of the SIEMENS trademark that enjoys a worldwide reputation and amounts to well-known trademark as acknowledged by prior Panels (cf. Siemens AG v. Dorofeev, Konstantin,WIPO Case No. D2013-0923, Siemens AG v. Mr. Ozgul Fatih,WIPO Case No. D2010-1771 and Nokia Corporation, Siemens AG, Nokia Siemens Networks Oy v. Chen Fang Fang,WIPO Case No. D2008-1908). The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. D. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s SIEMENS trademarks enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the SIEMENS mark, there is no doubt that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain names.
Furthermore, in this Panel’s view, it is inconceivable that the Respondent would have chosen for some legitimate purposes a domain name such as the disputed domain names and use them in good faith. The fact that these domain names have never been actively used notwithstanding their registration in December 2017 is a clear indication of such bad faith in the present case.
Consequently, the Panel is of the opinion that the disputed domain names and have been registered and are being used in bad faith under the 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.
Philippe Gilliéron
Sole Panelist
Date: April 8, 2019
Full & Egal Universal Law Academy