WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siebel Systems, Inc. v. Shoji Mathew
Case No. D2002-0607
1. The Parties
The Complainant is Siebel Systems, Inc., of 2207 Bridgepointe Parkway, San Mateo, California, United States of America.
The Respondent is Shoji Mathew. His address at the time of the Complaint was listed as being in Houston, Texas, United States of America. A later communication from him gave a changed address in Glendale, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <siebelusergroup.com>.
The Registrar of the disputed domain name is Register.Com, 575 8th Avenue, New York, New York 10018, United States of America.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail on June 28, 2002, and in hard copy on July 10, 2002. The Complaint met the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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"). The fee payment required of the Complainant appears to have been properly made.
The Center requested and the Registrar, Register.com, provided verification that it is the Registrar of the disputed domain name <siebelusergroup.com>, that Respondent is the registrant, that the Uniform Domain Name Dispute Resolution Policy applies to the disputed domain name, and that English is used in connection with the registration. The Registrar also confirmed the allegations of the Complaint as to the official contract details for Respondent.
After an appropriate check for compliance with the formal requirements of the Rules and Supplemental Rules, the Center notified the Complaint to the Respondent on July 12, 2002, along with a copy of the Complaint. This action was carried out as required by section 2(a) of the Rules. The Notification stated that the "last day for sending your Response to the Complainant and to us is August 1, 2002".
Respondent did not submit a response to the Complaint. However, on August 1, 2002, Respondent did send an email message to the Center's Case Manager for this case. Although it denied having received documents concerning the case, the email message additionally stated:
"...Anyway if Siebel is not interested in supporting their developer through TechieIndex, we are not at all interested in doing so. It's their developers and their business.
We have made strong decision to remove any materials concerning Siebel in TechieIndex & will be removed every contents concerning Siebel from all our networks.
We do not want to www.siebelusergroup.com also. But i still would like to see the papers, that domain was with me for last 2 years, many people contacted me before to buy that one."
Not having received a Response, the Center on August 5, 2002, sent to Respondent a Notification of Respondent Default.
The Center invited William L. Mathis to serve as the sole panelist for this case. He accepted and provided the Center with his Declaration of Impartiality and Independence.
On August 23, 2002, the Center notified the parties of the appointment in this case of an Administrative Panel consisting of a sole member, William L. Mathis.
4. Factual Background
Complainant Siebel Systems, Inc. was founded in 1993. It provides customer relationship management software used to plan, schedule and control presale and postsale activities in an organization. The software enables a customer to interact with a company through various means including the Internet.
Complainant employs over 7000 people in offices located in many countries. Its thousands of customers worldwide fall in a variety of industry categories, including automotive (e.g., BMW Financial Services), consumer goods (e.g., Hershey Foods Corporation and Fujifilm), Entertainment and Hospitality (e.g., Princess Cruises), Healthcare (e.g., BlueCross BlueShield of Florida, Inc.), high technology (e.g., Hewlett-Packard Company), institutional finance (e.g., Charles Schwab & Co., Inc.), insurance (e.g., AIU North America, Inc.), manufacturing (e.g., The Boeing Corporation), media (e.g., BusinessWeek), medical (e.g., Baxter Healthcare Corporation), oil, gas and chemicals (e.g., BASF AG), pharmaceuticals/biotech (e.g., Bayer AG), public sector (e.g., United States Postal Service), retail (e.g., Home Shopping Network), retail finance (e.g., Bank of America), travel and transportation (e.g., Canadian National Railway Company), and telecommunications (e.g., British Telecommunications plc and Deutsche Telekom AG).
Complainant's products and services have been popular and have received recognition for their quality. In the year 2000, Fortune magazine ranked Complainant second among the "100 fastest growing companies".
Complainant has an Internet website, <www.siebel.com>. This website contains information about the company, its products, industry solutions, technology, services and other matters. The website also has a support web page through which Complainant's technical knowledge base of alerts, technical notes, and solutions may be accessed. Customers or users of Complainant's products can submit enhancement, patch or service requests.
Complainant is the owner of United States Trademark Registration No. 2,207,835, issued on December 8, 1998, for the mark SIEBEL for products identified as "computer software for use in the organization, management and customer support of information related to sales and marketing systems, and user manuals sold therewith. This registration is on the Principal Register.
The SIEBEL trademark is registered in a number of other countries as well, including Australia (Reg. No. 707,819); Brazil (Reg. No. 809401030); Canada (Reg. No. 507,281), Chile (Reg. No. 557,500); China (Reg. No. 1090683); European Union (Reg. No. 184,523); France (Reg. No. 97664774); Hong Kong (Reg. No. 4397/1997); Indonesia (Reg. No. 391174); Israel (Reg. No. 105012); Mexico (Reg. No. 553446); Norway (Reg. No. 182885); Singapore (Reg. No. 96/5899); South Africa (Reg. No. 96/5899); South Korea (Reg. No. 38135); Switzerland (Reg. No. 436110); Taiwan (Reg. No. 771639); Thailand (Reg. No. TM113323); and Turkey (Reg. No. 1999/009619).
The Respondent registered the disputed domain name on December 28, 2000, and had, at the time of the Complaint, a web site that could be accessed through use of the disputed domain name.
5. Parties’ Contentions
Complainant contends that its registered mark SIEBEL has been extensively used in relation to the business of the Complainant and is understood and associated by consumers throughout the world as the mark of the Complainant, denoting its goods and business.
Complainant contends further that the disputed domain name is confusingly similar to its SIEBEL mark. In particular, Complainant urges that the domain name at issue here contains Complainant's well-known trademark, SIEBEL, combined with the generic term "user group" and implies sponsorship or endorsement by, or affiliation with, Complainant.
It is also contended by Complainant that the Respondent has no rights or legitimate interests in the domain name in issue. Complainant says that Respondent has no relationship with Complainant, explaining that Respondent is not a distributor or licensee of Complainant, and has not been given Complainant's permission to use Complainant's well-known trademark SIEBEL. Respondent has no relationship with Complainant.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.
The remedy requested by Complainant is transfer of the disputed domain name registration to Complainant.
No contentions have been advanced by or on behalf of the Respondent.
6. Discussions and Findings
In order to prevail under the Policy, Complainant must show that <siebelusergroup.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that Respondent has no rights or legitimate interest in respect of <siebelusergroup.com>; and that <siebelusergroup.com> has been registered and is being used in bad faith.
That Complainant has rights in the SIEBEL trademark is established by the trademark registrations mentioned above.
It is well settled that the inclusion of ".com" in a domain name has little if any bearing on whether the domain name is confusingly similar to a trademark that does not have ".com" as its terminal component.
Similarly, the mere addition of "usergroup" to a well known trademark is unlikely to be significant to the issue of confusing similarly. See, for example, Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (domain name such as <sonycampus.com> and <sonycollege.com> are confusingly similar to SONY trademark). In the present case, the word "siebel" dominates the impression created by the domain name in dispute, and its identity with Complainant's mark assures that the domain name as a whole will be associated with Complainant's mark. Confusion as to source or sponsorship or affiliation will result.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
The Respondent’s Lack of Rights
Respondent has had an opportunity to come forward in this proceeding with evidence pertinent to whether Respondent has any rights or legitimate interests in the disputed domain name, but Respondent has remained silent. From this, the Panel draws an inference that Respondent has no rights or legitimate interests.
Respondent's name does not include "siebel". Moreover, the Complaint alleges that Respondent does not own any trademark rights in SIEBEL and that Respondent has not been commonly known by the name "Siebel User Group".
Further, the Complaint shows that Respondent did not acquire any interest in SIEBEL by reason of a business relationship (e.g., distributor or licensee) with Complainant.
Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent’s Bad Faith Registration and Use
The Complaint alleges, and Respondent has not denied, that the disputed domain name <siebelusergroup.com> has a plain meaning which implies "that someone who accesses this URL will find a user group sponsored by, endorsed by, or affiliated with Complainant." The Panel agrees that this is so. However, the Panel finds nothing on Respondent's website pages which accompanied the Complaint to indicate that a user group actually is associated with the site. In this respect the domain name itself is misleading.
Moreover, the implication of a relationship with Complainant is augmented by the content of the website page copies which were annexed to the Complaint. Complainant's mark SIEBEL appears prominently and repeatedly on these pages. The overall impression created is that of a promotional tool sponsored or authorized by Complainant for use in connection with the marketing of Complainant's products. Respondent's actions in creating this misleading impression are indicative of bad faith.
Further, the Complaint charges that Respondent's web site has been used to violate Complainant's copyrights and "to induce others to disclose improperly Complainant's confidential information and other intellectual property." These allegations have not been denied by Respondent. Nor did Respondent respond to earlier charges detailed in a demand letter from a representative of Complainant. See Annexes 6 and 7 to the Complaint.
Turning to Respondent's comments in his above-quoted August 1, 2002, message to the Center, it is noted that Respondent speaks of "supporting their [Complainant's] developers." The Panel takes this as an admission that Respondent has known that his registration and use of the disputed domain name would be viewed as activities sponsored by Complainant. Yet, Respondent has known all along that Complainant did not sponsor his activities. Facing the challenge presented by the Complainant in this proceeding, Respondent declares a "strong decision" to remove content concerning Complainant from Respondent's networks. The message says explicitly that Respondent no longer wants the disputed domain name but goes on to suggest that Respondent hopes to sell it.
Considering the entirety of the record in this case, the Panel finds Respondent's course of conduct to be an unjustifiable attempt to interfere with Complainant's business. He could not have created the disputed domain name without knowledge of Complainant's business and trademark. He could not reasonably have believed that Complainant wanted to vest in him any power to take action purporting to support buyers and users of Complainant's products. And, his continued holding of the registration of the confusingly similar domain name, which he says he does not want, imposes on Complainant an unjustifiable burden of taking actions to guard against the existing potential for use of the domain name (and the website it identifies) to damage Complainant's goodwill.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
Having shown that the domain name in issue is confusingly similar to a trademark in which Complainant has rights, and that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith, Complainant is entitled to prevail in this proceeding.
Therefore, it is ordered that the registration of the disputed domain name <siebelusergroup.com> be transferred to Siebel Systems, Inc.
William L. Mathis
Dated: September 6, 2002