WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Dorofeev, Konstantin
Case No. D2013-0923
1. The Parties
The Complainant is Siemens AG of Erlangen, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Dorofeev, Konstantin of Izhevsk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <itssiemens.com> (“the Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing contact information for the disputed domain name which differed from the contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 31, 2013.
The Center verified that the Complaint together with the amended 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 amendment to the Complaint, and the proceedings commenced on June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2013.
The Center appointed Dawn Osborne as the sole panelist in this matter on July 2, 2013. 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.
The Complainant is one of the world’s largest electronics companies founded more than 150 years ago with customers in 190 countries. It owns registered trademarks for SIEMENS covering, inter alia, Germany, the European Community and the United States of America (“USA”), registered as early as 1994.
The Respondent registered the Domain Name after the Complainant (its previous owner) failed to renew its previous registration of the same string of characters <itssiemens.com>. The Respondent is using, on the website to which the Domain Name resolves, content which was used by the Complainant about traffic management services when the Complainant had its equivalent registration. The Respondent has, however, added links offering pharmaceuticals not connected with the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Complainant is one of the world’s largest electronics companies founded more than 150 years ago with customers in 190 countries. It owns registered trade marks for SIEMENS covering, inter alia, Germany, the European Community and the USA. The trade mark SIEMENS is associated exclusively with the Complainant.
The Domain Name is confusingly similar to the Complainant’s SIEMENS trade mark. The prefix “its” is an abbreviation for “it is” and indicates the Complainant. The public will focus on the famous sign SIEMENS and disregard this descriptive prefix and think it is an official website. Additionally the website refers to “ITS devices” and “ITS communication” and the public may think it is descriptive of this content also. Also the Respondent pretends to be the Complainant providing traffic management services and offers a link to the Complainant’s general website at “www.siemens.com”.
The Respondent has no rights or legitimate interests in the Domain Name. It is not one of the Complainant’s representatives or licensees. The Domain Name was previously registered by the Complainant and accidentally not renewed. The Respondent is partly using content which was previously provided by the Complainant but has inserted advertising links for online pharmacies offering generic Viagra. As such, the Respondent is not using the Domain Name in good faith or in connection with a bona fide offering of goods and services. The Domain Name was registered and is being used in bad faith. The Respondent is making an illegitimate use of the Domain Name by adding sponsored links with the intent for commercial gain to misleadingly divert customers or to tarnish the SIEMENS trade mark. It is obvious that the Respondent had knowledge of the Complainant’s trade mark. The Domain Name was, therefore, registered to harm the good reputation of the trade mark SIEMENS, confuse the public and cause damage to the Complainant in disrupting its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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.
A. Identical or confusing similarity
The Complainant has trade mark registrations for SIEMENS including registrations in Germany, the European Community and the USA. The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s SIEMENS registered trade mark and the generic term “its”, suggesting identification of a party called “Siemens” or perhaps indicative of the “ITS” products referred to on the website at the Domain Name. In any event the distinctive part of the Domain Name is the SIEMENS trade mark. The addition of the non distinctive text “its” does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s SIEMENS trade mark. As such, the Panel holds that the Domain Name is confusingly similar to the trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods and services (given the confusing use as discussed below) and is not commonly known by the Domain Name, nor is it making noncommercial fair use of it given the use for links to third party products not connected with the Complainant. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and accordingly that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four nonexclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s trade mark with only generic terms added which either reflect the nature of goods offered or can be seen as indicating the Complainant. Further, in the opinion of the Panel, the use made of the Domain Name is deceptive. It is not at all clear whether the website to which the Domain Name points is or is not connected with the Complainant. The copying and re-use of content from a website belonging to the Complainant previously at the same alphanumeric domain name by the Respondent on the Domain Name gives the impression that the Respondent’s website is connected with the Complainant and indicates that the Respondent is well aware of the Complainant, its business and trade marks. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Complaint, the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used it to attract Internet traffic to its own website, at the Domain Name, for commercial gain by creating a likelihood of confusion that such website is connected to the Complainant and adding links to websites offering pharmaceuticals not connected with the Complainant. As such, the Panel finds that the Domain Name has been registered and is being used in bad faith satisfying the third limb of the Policy. It is, therefore, not necessary to consider further the Complainant’s representations as to disruption of its business.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith.
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 <itssiemens.com> be transferred to the Complainant.
Date: July 10, 2013