WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. CPC
Case No. D2011-1581
1. The Parties
The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is CPC / Cement Pakistan Company of Lahore, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <flendergear.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2011, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2011.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 2, 2011. 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 Flender Company was founded in Germany in 1899 and has a long tradition in the manufacturing and selling of gear units under the FLENDER trademark.
The Flender Company recently merged with the Complainant Siemens AG.
The disputed domain name was registered on September 3, 2010.
The Panel accessed the website at the disputed domain name on November 16, 2011, when there was no active webpage linked to it. Annex 6 to the Complaint shows previous uses of the disputed domain name to host a website containing partial reproductions of the Complainant's official website.
5. Parties’ Contentions
(i) The Complainant has merged with the Flender Company. The Complainant owns several trademark registrations containing the term “flender” worldwide. The FLENDER trademark is well-known in the field of mechanical power transmission technology and has excellent reputation. The disputed domain name registered by the Respondent is identical to trademarks in which Complainant has rights.
(ii) The Respondent is not and has never been one of the Complainant’s representatives, licensees or licensed distributors. The Complainant has not authorized the Respondent to use the sign FLENDER as a distinctive part of a domain name, neither to offer the respective Flender goods. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Respondent had knowledge of the Complainant’s trademark, which is being well-known for decades throughout the world. It is inconceivable that the Respondent was unaware of the trademark FLENDER, which has been extensively used for decades. Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name.
(iii) Because the Complainant’s Flender goods are offered for sale on the website at the disputed domain name, it is obvious that the Respondent is aware of the Complainant’s FLENDER trademark and its company name. Not only the trademarks used on the Respondent's website are identical to the Complainant’s trademarks without the Complainant’s permission, but also the photos published on the website at the disputed domain name are copies of photos from the Complainant’s website without the consent of the Complainant. In registering and using a domain name which consists of the Complainant’s trademark FLENDER in connection with a descriptive term directly related to the business of the Complainant (“gear”), the Respondent attempts to confuse the public and to cause damage to the Complainant in disrupting its business. The Respondent did not reply to the Complainant's contacts in order to verify whether the offered products are original Flender products of the Complainant or whether even the products are imitations. Finally, the conclusion of bad faith is also based on the fact that the Respondent has already being considered a cybersquatter in previous UDRP proceedings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
A. Identical or Confusingly Similar
The Panel has no doubt that “flender” is a term directly connected with the Flender Company, which has recently merged with the Complainant (Annex 5 to the Complaint).
Annex 3 to the Complaint demonstrates registrations of FLENDER trademarks since at least 1959.
The trademark FLENDER is wholly encompassed within the disputed domain name, which also includes the generic term “gear”, an expression that describes one of the Complainant's main products. The Panel concludes that the addition of the word "gear" is not sufficient to refute the similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) of the Policy.
In a previous UDRP case, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question.” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Based on on this prima facie evidence in the Complaint and the Respondent’s default, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant’s trademark was already known in the business of mechanical power transmission technology when the disputed domain name was registered. Therefore, it is not feasible that the Respondent could ignore the Complainant’s reputation and business when it registered the disputed domain name.
Moreover, the unauthorized use of the disputed domain name to sell Flender products and the reproduction of the FLENDER trademark and official website (Annex 6 to the Complaint) make clear that the adoption of the words “flender” and "gear" to compose the disputed domain name were not a coincidence.
Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenues from this practice; and
(iii) deprives the Complainant from directly selling its original products to prospective clients.
This conclusion is emphasized by the Respondent's non-collaborative behavior in this case and when received the cease-and-desist letters, as well its track record as a respondent in a previous UDRP case, FLSmidth A/S v. CPC, Atif Munir, WIPO Case No. D2011-0563.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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 <flendergear.com> be transferred to the Complainant.
Dated: November 17, 2011