WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siebel Systems, Inc. v. Implementation Services Group, Inc.
Case No. D2002-1070
1. The Parties
The Complainant is Siebel Systems, Inc., of San Mateo, California, United States of America, represented by Gretchen R. Stroud, Esq. of Cooley Godward, LLP, of Palo Alto, California, United States of America.
The Respondent is Implementation Services Group, Inc., of Austin, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <siebelemployment.com>, and the registrar of that name is Network Solutions, Inc. of Dulles, Virginia, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 22, 2002. On November 26, 2002, the Center transmitted by e-mail to the registrar Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient in that the Complainant had incorrectly named the registrar as VeriSign, the Complainant filed an e-mail Amendment to the Complaint on December 2, 2002, and in hard copy on December 4, 2002. The Center verified that the Complaint together with the Amendment satisfied the formal requirements of the 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").
In accordance with the Rules, Paras. 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2002. In accordance with the Rules, Para. 5(a), the due date for Response was December 23, 2002. The Response was filed with the Center on December 23, 2002.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 10, 2003. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence on January 10, 2002, as required by the Center to ensure compliance with the Rules, Para. 7.
This Decision was due on January 24, 2003, but the Panel decided it needed more time and delayed the due date to February 3, 2002, (Rule 10(c)).
4. Factual Background
The Complainant is a large American company specializing in the production and sale of computer software for customer relations management. It owns several registered trademarks in the name, "Siebel", throughout the world, and that name has become internationally famous among those familiar with computers.
The disputed domain name is registered to the Respondent. The record of registration was created on December 10, 2001. The Respondent currently uses the disputed domain name for its web site providing information about employment opportunities at various companies that seek people who are familiar with the Complainant's "Siebel" software. The Respondent also provides job listings for Lawson software on the disputed domain name web site.
5. The Partiesí Contentions
The Complainant was founded in 1993, and is now the world's leading provider of eBusiness solutions. It furnishes an integrated family of eBusiness applications and customer relationship management software and related services. Complainantís revenues, resulting from a customer base of well-recognized companies across a wide variety of industries and countries, amounted to $2.05 billion in 2001.
The Complainant owns numerous registered trademarks of the name, "Siebel", in many countries. It also maintains a significant presence on the Internet, represented by the domain name, <siebel.com>, among many others. The "Siebel" mark has acquired the status of a famous international mark.
The disputed domain name is confusingly similar to the Complainant's trademark. The addition of the word "employment" does not erase the confusing similarity of the name to the mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a distributor or licensee of the Complainant, and the Complainant has never granted the Respondent permission to use the Complainant's mark. In addition, the Respondent has not been commonly or otherwise known by the name, "Siebel Employment."
The Respondent registered and is using the disputed domain name in bad faith. The Respondent registered the name despite knowing about the Complainant's trademark rights. By its plain meaning, the disputed domain name implies that someone who accesses it will find employment opportunities sponsored by, endorsed by, or affiliated with the Complainant, which implication is false and misleading. The Respondent has attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site.
The disclaimer found at the Respondent's web site is ineffective to correct the initial interest confusion caused by the use of the Complainant's trademark in the disputed domain name.
The Complainant's trademark is a famous mark.
The disputed domain name is not identical or confusingly similar to the Complainant's mark. The Complainant has not submitted any evidence showing actual confusion among consumers in connection with the disputed domain name. The fact that the Complainant presently owns domain names that incorporate its trademark in conjunction with a generic term does not indicate that consumers will expect that domain names which incorporate that mark are associated with the Complainant. The word "employment" is not within the scope of services offered by Complainant under the "Siebel" mark.
Prior to its notification of this dispute, the Respondent has used the disputed domain name in connection with a bona fide service whereby the Respondent facilitates contact between companies that utilize the Complainantís software and a highly specialized pool of professionals proficient in such software. The Respondentís application of the "Siebel" mark is purely nominative.
The Respondent has neither registered nor is using the disputed domain name in bad faith. The Respondent's use of the disputed domain name meets none of the criteria cited in paragraph 4(b) of the Policy evidencing bad faith in registration and use. The Respondent has removed a paragraph from its web site found at the disputed domain name, which could arguably imply association with the Complainant. The Respondent has placed a prominent disclaimer on the web site, which dissociates it from the Complainant.
6. Discussion and Findings
Pursuant to Para. 15(a) of the Rules, the Panel will decide the 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."
The Complainant may prevail in these proceedings and be granted the disputed domain name if the Complainant can demonstrate all of the elements required in Paras. 4(a)(i) through (iii) of the Policy, as follows:
- that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has furnished the Panel with ample evidence that the Complainant owns several registered trademarks in the name, "Siebel" (e.g., United States Trademark Registration No. 2,207,835; France Trademark Registration No. 97664774; and Brazil Registration No. 809401030) (see Annex 6 to the Complaint). All of these registrations occurred years before that of the disputed domain name.
Having established the Complainant's trademark rights in the mark, "Siebel", the Panel must now determine whether the disputed domain name, <siebelemployment.com>, is identical or confusingly similar to it. The name differs from the mark due to the addition of the gTLD, ".com", and a second word, "employment". It has been well-established in many previous decisions under the Policy that the addition of a gTLD to a trademark is of no consequence in determining identity or similarity. However, the addition of "employment" means that the Panel cannot conclude that the disputed domain name is identical to the Complainant's trademark.
There have been many cases brought under the Policy where panels have considered whether domain names that include a word after an established trademark are confusingly similar to that mark. Reasoning that "confusingly similar" under the Policy refers to the confusion consumers might face as to the owner of the disputed domain name, those panels have usually concluded that domain names containing a mark plus a word directly related to the complainant's primary business are confusingly similar to that mark. Cases where panels have declined to find confusing similarity in such situations seem to be limited to circumstances where the mark is a common or generic word. See Virgin Enterprises Limited v. Internet Domains, WIPO Case No. D2001-1008 (October 16, 2001) and Micron Technology, Inc. v. ThisDomain Is For Sale, WIPO Case No. D2001-0712 (July 24, 2001). In this case, the mark, "Siebel", is not a common English word.
Nonetheless, the Respondent contends that the disputed domain name should not be grouped in that great body of cases where confusing similarity has been found when a word has been attached to an established trademark because "employment" is not within the scope of services offered by the Complainant under the mark at issue. There are Policy cases to support the general position that confusing similarity does not arise when the additional disputed domain name word does not relate directly to the services or products offered by the complainant (see for example, Koninkligke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796 (October 10, 2001) and America Online, Inc. v. GSD Internet, WIPO Case No. D2001-0629 (June 25, 2001)).
However, the Panel notes that the word "employment" applies necessarily to all businesses, or at least to all businesses that employ people, a category into which the Complainant easily falls. Whether or not the disputed domain name is used for this purpose, it would be entirely reasonable for anyone seeking employment with the Complainant to access the disputed domain name. (See for comparison, Rusconi Editore S.P.A. v. Bestinfo, WIPO Case No. D2001-0656 (July 5, 2001), where the panel reasoned in the case of the disputed domain name, <vitalityonline.com>, that: "The Panel finds that the Domain Name is a particularly apt name for an online version of the Complainant's magazine and the Panel readily accepts that if someone were seeking to access an online version of the Complainant's magazine, they might well search by reference to the Domain Name.")
Per the above discussion, the Panel concludes the Complainant has established that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent does not claim rights or legitimate interests in the disputed domain name through permission, license or authorization from the Complainant. Rather, the Respondent cites Para. 4(c)(i) of the Policy, which states that a respondent may establish legitimate rights or interests by presenting evidence to the Panel that, before any notice to the Respondent of the dispute, the Respondent was using the domain name in connection with a bona fide offering of goods or services. The Respondent contends that the service it provides through the disputed domain name is to facilitate the employment of people experienced in the use of the Complainant's software products. Also, while the Respondent does not actually cite Para. 4(c)(iii) of the Policy, the Respondent does make the fair use argument that the disputed domain name is the only way the Respondent can describe the services it offers.
The Panel accepts that the Respondent is free to act as a lister or broker for jobs for persons with expertise in Complainantís software. The Panel also accepts that, in order for the Respondent to let the public know it offers this service, the Respondent may have to use the Complainantís software name. In the Panelís view, this trademark precept is as well settled internationally as it is in U.S. law, and fits comfortably within the Policyís legitimate rights and interests and fair use meaning.
Nonetheless, the Panel takes exception to the Respondentís domain name. In the Panelís view, the Respondent has not chosen a domain name that identifies it as a middleman, broker or lister of jobs for people with expertise in Complainantís software. Instead, the Respondent has calculatedly registered a domain name it is confident will lead the public to think the Complainant is the source of the jobs for the employment using the Complainantís software. The disputed domain name, <siebelemployent>, primarily means employment with the company Siebel, i.e., the Complainant.
Even though the Panel believes the actual material on the web site is of secondary importance relative to the domain name itself, the Panel does note with disapproval the Respondentís cat-and-mouse game with the Complainant in: showing and then removing a "Who we are" message that in the Panelís view also initially was calculated to make the public think the Complainant was the source of the Respondentís employment services (Complaint Annex 7 and Response Annex 1); Respondentís moving its disclaimer of affiliation with Complainant from a less prominent to a more prominent position on its web site in response to Complainantís letters asserting trademark violation (Complaint Annexes 9 and 10 and Response Annex 2). Finally, the Panel wonders how the Respondent can claim it is offering a bona fide service when it is using the disputed domain name with Complainantís mark to also promote Lawson software.
The Panel is confident that there are plenty of ways in which the Respondent could identify its service in a domain name without violating the Policy. (see Volvo Trademark Holding AB v. e-motordealer Ltd, WIPO Case No. D2002-0036, (March 22, 2002) where the Panel dealt in similar fashion with the disputed domain name <volvoinsurance.com>).
C. Bad Faith
The Panel agrees with the Complainant about why the Respondent registered this domain name that is confusingly similar to the Complainantís mark. The Respondent was not content with its prospects as a lister or broker for software expert job positions involving the Complainantís and other producersí software. The Respondent thought it could leverage its business by choosing a domain name that, while admittedly informing the public of the service they will find if they go to the disputed domain name, also leads the public to believe it is the Complainant that is providing the service. The Panel finds this is in violation of the Policyís bad faith provisions at Para. 4(b)(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 complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Panel finds that the disputed domain name, <siebelemployment.com>, is confusingly similar to a trademark in which the Complainant has rights. Furthermore, while the Respondent is using the disputed domain name to offer the service of listing jobs for persons expert in the Complainantís software, the Respondent is not in good faith because it is posing as the Complainant. Finally, the Panel finds the Respondent has violated the Policy bad faith provisions at Para. 4(b)(iv) by using for the Respondentís commercial gain the disputed domain name and the resulting confusion with the Complainant as to source.
Therefore, based on Rule 15 and Policy Para 4(i), the Panel orders that the disputed domain name, <siebelemployment.com>, be transferred from the Respondent, Implementation Services Group, Inc. to the Complainant, Siebel Systems, Inc.
Dennis A. Foster
Date: February 3, 2003