The Complainant is Siemens AG, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2019, 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.
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, and the proceedings commenced on August 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Gregor Vos as the sole panelist in this matter on September 11, 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 a German company, which is engaged in inter alia the field of energy, automation and control, power, transportation, information, financial services, and communication.
The Complainant is the owner of International Trademark registration No. 637074 (the “Trademark”) for the word and figurative mark SIEMENS registered on March 31, 1995.
The Respondent registered the Domain Name on December 15, 2005. The Domain Name resolves to a webpage displaying pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to the Trademark. The Domain Name reproduces the Trademark followed by the descriptive term “energy” and followed by a generic Top-Level Domain (“gTLD”). Energy would refer to the energy business in which the Complainant is active. According to the Complainant its Trademark would be well-known. The public would recognize SIEMENS and would therefore associate the Domain Name with the Complainant and the products and services that it offers in that regard. The Complainant concludes that Internet users will have the false impression that the Domain Name is an official Internet address of the Complainant.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not affiliated with the Complainant, not authorized by the Complainant to use the Trademark and not commonly known by the Domain Name. According to the Complainant the Domain Name is currently inactive and the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The Complainant again raises that the Trademark is a well-known trademark. In light of these circumstances, the Complainant concludes that the Respondent has no legitimate noncommercial or fair use of the Domain Name and that the Respondent aims to mislead Internet users.
Finally, the Complainant argues that the Respondent knew or should have known about the earlier Trademark. The Respondent would, according to the Complainant, have the intention to use the reputation of the Trademark. Also, the Respondent would have registered the Domain Name to prevent the Complainant from using its Trademark in a domain name relating to its energy business, since it would be very conceivable that the Domain Name would be of relevance to the Complainant. Furthermore, the Complainant argues that the Domain Name is inactive and that the passive holding of the Domain Name amounts to bad faith. The Complainant states that there is no use of the Domain Name by the Respondent without the consent of the Complainant that would not involve bad faith.
The Complainant requests that the Domain Name will be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceedings, the Complainant must prove that each of these three elements is present. Only if all three elements are fulfilled can the Panel grant the remedy requested by the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that the Complainant is registered as the owner of the invoked Trademark, as can be seen from the submitted copy of the registration of the Trademark. Consequently, the Panel finds that the Complainant has proven that it is the owner of the Trademark.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademark, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Trademark, SIEMENS, is both a word and a figurative mark. In the assessment of confusing similarity, the domain name and the textual components of the relevant mark are compared. To the extent that design elements would be incapable of representation in domain names, these elements are largely disregarded for the assessment of confusing similarity. Therefore, a trademark with design elements can satisfy the requirement that a complainant owns rights in a mark for the assessment of confusing similarity (see section 1.10 of the WIPO Overview 3.0; American Public University System, Inc. v. Toby Schwarzkopf / Kyle Kupher / Domains by Proxy, LLC / DreamHost, LLC,WIPO Case No. D2017-0070).
The logo of the Trademark prominently features the name SIEMENS, which has been incorporated in the Domain Name entirely. In addition to the Trademark, the descriptive term “energy” is used in the Domain Name. According to previous UDRP panel decisions, the addition of merely descriptive or geographical wording to a trademark in a domain name would not avoid a finding of confusing similarity under the first element of the UDRP (see section 1.8 of the WIPO Overview 3.0 and Mr. Ralph Anderl v. Yang Min,WIPO Case No. D2013-1226; Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,WIPO Case No. D2017-0075).
Although the Complainant does not explicitly argue that the addition of a gTLD suffix can be ignored in the comparison between the Domain Name and the Trademark, the gTLD suffix is generally ignored for the purpose of assessing confusing similarity under the Policy (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae,WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the UDRP is fulfilled. B. Rights or Legitimate Interests
In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).
In the present matter, the Complainant argues that the Respondent is not affiliated with the Complainant and that it is not authorized by the Complainant to use the Trademark. The Complainant further argues that the Respondent is not commonly known by the Domain Name. The Complainant concludes that the Domain Name is currently inactive and that there is no bona fide offering of goods or services with the Domain Name.
The Panel finds that the Complainant showed that there are no indications for legitimate use of the Domain Name. The Respondent is not affiliated with the Complainant and is not authorized to use the Trademark. Also, the Respondent is also not known under the Domain Name, as its name does not correspond to the Domain Name.
Since the Complainant did not meet the standard of proof to show that the Domain Name leads to an inactive website, the Panel decided to consult the website to which the Domain Name refers (it follows from section 4.8 of the WIPO Overview 3.0 that the panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision, see e.g., Mark Overbye v. Maurice Blank, G B.V.,WIPO Case No. D2016-0362). The Domain Name refers to a parked page containing so-called PPC links. At this page, the website potentially offers the Domain Name for sale. The links redirect to other websites with commercial/sponsored links relating to a variety of goods and services, including energy related goods and services.
Prior panels deciding under the Policy have held that PPC links on parking pages built around a trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) (see Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344. See also section 2.9 of the WIPO Overview 3.0).
In addition, the Domain Name consists of the Trademark plus an additional term, which is one of the areas in which the Complainant is active. This composition effectively suggests endorsement by the Complainant. The nature of the Domain Name therefore creates affiliation with the Complainant (see section 2.5.1 of the WIPO Overview 3.0). Also, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use is a factor that points towards a lack of rights or legitimate interests.
Based on the above, the Panel finds that the Complainant has sufficiently set out its prima facie case. The burden of production on this element therefore shifts to the Respondent. As the Respondent has not replied to the Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled. C. Registered and Used in Bad Faith
Bad faith under paragraph 4(a)(iii) of the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b)(iv) of the UDRP provides that if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, 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 ,this constitutes evidence of bad faith (see also section 3.1 of the WIPO Overview 3.0).
The Trademark is a well-known trademark and the Domain Name is confusingly similar to the Trademark, as explained under section 6.A. above. As the Complainant argued, the Respondent is unaffiliated to the Complainant. Furthermore, the Respondent lacks legitimate rights or interests in the Domain Name and it merely uses the Domain Name to cause confusion for its commercial benefit via the PCC links placed on the parked page. The fact that the Trademark is widely known also constitutes that the Respondent knew or should have known that its registration would be confusingly similar to the Trademark. Moreover, the Respondent chose to add the sector in the Domain Name in which the Complainant is active, which indicates that the Respondent knew that the registration of the Domain Name would be confusingly similar to the Trademark (see section 3.2.2 of the WIPO Overview 3.0).
Considering the circumstances of this matter, the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith.
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled. 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 Domain Name be transferred to the Complainant.
Gregor Vos
Sole Panelist
Date: October 2, 2019
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