The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is James H Park of GimHae-Shi, Republic of Korea.
The disputed domain name <siemensgamesa.com> (the “Domain Name”) is registered with DropCatch.com 550 LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 21, 2017, 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 April 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. The Center received an email from the Respondent on May 1, 2017. The Respondent did not however submit any formal response.
The Center appointed Martin Schwimmer as the sole panelist in this matter on June 7, 2017. 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. Due to unexpected personal circumstances, the Panel had to extend the decision due date.
Complainant Siemens AG (“Siemens”) is an electronics and electrical engineering company. Non-party Gamesa Corporacion Technologica S.A. (“Gamesa”) sells devices and components used in wind power generation, such as wind turbines. Complainant’s wind power subsidiary merged with Gamesa. After the merger’s approval was announced in March 2017, Respondent registered the domain name <siemensgamesa.com> (the “Domain Name”) in April, 2017. The Domain Name is not being used.
The Complainant owns International Registration No. 637074 for the trademark SIEMENS, registered in 1995. It alleges that the SIEMENS mark is famous. The Complainant promotes its goods and services using, inter alia, a website at “www.siemens.com”.
The Complainant’s wind power subsidiary’s merger with Gamesa was approved in March, 2017. The new company’s goods and services are promoted at, inter alia, “www.gamesacorp.com”. According to the website, the company “Siemens Gamesa Renewable Energy was created in April 2017 with the merger of Gamesa Corporation Technology and Siemens Wind Power.”
The Complainant denies any connection of any manner with the Respondent. It notes that the Respondent’s trading name does not reflect any element of the Domain Name, and that it is not utilizing the Domain Name.
The Complainant alleges that rumors of the merger with Gamesa were widely reported in the business media at least as early as January 2016. Approval of the merger was reported in the media on March 13, 2017. The Domain Name was registered in April 2017. Accordingly, the Respondent knew or should have known of the Complainant’s rights in the SIEMENS trademark and, impliedly, its prospective use of the GAMESA trademark as well.
The Domain Name is not actively used, however such passive holding of a domain name reflecting a well-known mark constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
By identifying its international trademark registration and its website, Siemens has established its use and ownership of the SIEMENS trademark.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark SIEMENS along with the mark GAMESA. The Complainant does not make an unambiguous claim of ownership of the GAMESA trademark nor of the merged entity. However, it has provided evidence of use of the trading name SIEMENS GAMESA. Because of this usage, and because of media coverage of the merger, the Panel finds that the addition of the GAMESA mark does not distinguish the Domain Name from the Complainant’s trademark and in fact increases the confusion.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant has not licensed or otherwise permitted the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way.
The Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name. There is no evidence of the Respondent’s use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. There is no evidence that suggests that the Respondent is making a legitimate noncommercial or fair use of the Domain Name or the names “SIEMENS” or “SIEMENS GAMESA”
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The selection of the Domain Name <siemensgamesa.com> one month after the merger between the Complainant and Gamesa, is beyond coincidence. The Respondent acted with knowledge of the Complainant and its rights in the SIEMENS mark.
The fact that the Domain Name is not actively used does not hinder a finding of bad faith use under the Policy. Passive holding may equate with active use of a domain name, see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel cannot conceive of any good faith use of the Domain Name.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 <siemensgamesa.com> be transferred to the Complainant.
Date: July 20, 2017