WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Contact Privacy Inc. Customer 0134792265 / siemens srl Societa/Ditta
Case No. D2014-1155
1. The Parties
1.1 The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
1.2 The Respondent is Contact Privacy Inc. Customer 0134792265 of Toronto, Canada / siemens srl Societa/Ditta of Italy.
2. The Domain Name and Registrar
2.1 The disputed domain name <siemenssrl.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2014. At that time "Contact Privacy Inc. Customer 0134792265" was identified as the registrant in the online WhoIs database. On July 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 3, 2014, the Registrar transmitted by email to the Center its verification response disclosing the registrant as "siemens srl Societa/Ditta" and providing associated contact information for the Domain Name. The Center sent an email communication to the Complainant on July 8, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2014.
3.2 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").
3.3 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 July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 31, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 7, 2014. 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
4.1 The Company is one of the world's largest electrical engineering and electronics companies, with headquarters in Munich and Berlin. Its "Siemens" name is well known around the world and it is the owner of various registered trade marks in numerous countries that comprise or incorporate that term. These registered trade marks include:
(i) Community trademark No. 4240263 for the word mark SIEMENS applied for on January 14, 2005 and registered on March 28, 2006, in respect of goods and services in classes 1, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14,16, 17, 20, 21, 28, 35, 36, 37, 38, 39, 40,41 and 42.
(ii) International registration No. 637074 for the word mark SIEMENS filed on March 31, 1995 in respect of goods and services in classes 1, 3, 5, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 20, 21, 28, 35, 36, 37, 38, 40, 41 and 42, and designating (among other countries) Italy.
4.2 The Respondent would appear to be a corporate entity registered in Italy with the Commercial Chamber of Pisa with a "foundation date" of May 25, 2013. Its registration documents describe its business purpose as "trade services in relation to electric and electronic devices".
4.3 The Domain Name was first registered on May 28, 2013. Since that date no active website has operated from the Domain Name. Instead, the Domain Name has been and continues to be used for a holding page, the text of which is as follows:
sito in costruzione
hosting su piattaforma Apache/2.4.10 (Unix) mod_fcgid/2.3.9"
4.4 Among the individuals identified in the corporate documents filed in connection with the Respondent is one Mr Mettini. A telephone conversation took place between Mr. Mettini and a representative of the Complainant in March 2014. Mr. Mettini is reported to have made it clear during that conversation that the Respondent was not prepared to transfer the Domain Name to the Complainant for free.
5. Parties' Contentions
5.1 The Complainant contends that the Domain Name would be read by Internet users as a reference to the SIEMENS mark combined with the letters "srl". It further contends that "srl" would be understood as an abbreviation for "Societa a responsabilita limitata" (limited liability company), that is usually appended to the end of company names in Italy.
5.2 The Complainant asserts that the Respondent is not, and has never been, one of the Complainant's representatives, employees or licensees or otherwise authorised to use the SIEMENS mark.
5.3 The Complainant further contends that the mark has not been used in connection with any bona fide offering of goods and services or any legitimate noncommercial or fair use. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it chose its company name and registered the Domain Name. It claims that the Domain Name was selected by the Respondent "with intent to attract the Internet users for illegitimate purposes and to cause damage to the Complainant." In the circumstances it maintains that the Respondent has no rights or legitimate interests in the Domain Name.
5.4 So far as bad faith registration and use is concerned, the Complainant claims that the Domain Name was registered "in order to confuse the public and to cause damage to the Complainant in disrupting its business". The Complainant relies in this respect on the description of the Respondent's business in its registration documents, which it is claimed "correspond[s] to the core products offered by the Complainant".
5.5 The Complainant also contends that the conversation with Mr Mettini in March 2014 shows that the Domain Name has been registered for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name.
5.6 The Complainant also claims that the Domain Name was registered in order to prevent the Complainant from registering the Domain Name.
5.7 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, 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 (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate".
A. Identical or Confusingly Similar
6.4 The Complainant clearly has registered trade mark rights in the term "Siemens". The Panel accepts that the most sensible reading of the Domain Name is as the term "Siemens" and the letters "srl" in combination with the generic Top-Level Domain ".com". The Panel also accepts that "srl" is most likely to be understood as an abbreviation describing a type of company. In the circumstances, the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.5 For reasons that are addressed under the heading "Registered and Used in Bad Faith" below, the Panel accepts that the Domain Name was registered with knowledge of the Complainant's registered trade marks and with the intention of taking some unfair advantage of the reputation of those marks. Such activity does not provide a right or legitimate interest for the purposes of the Policy. The fact that the Domain Name reflects the registered name of the Respondent in Italy does not change the analysis given that the adoption of that name for the company appears to form part of the same scheme to take unfair advantage of the Complainant's rights. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.6 The Panel accepts that the Complainant's marks are very well known and that it is simply not credible that the Respondent could have either chosen the name "Siemens" for its company or as part of the Domain Name without knowledge of the Complainant. Further factors that support that conclusion are that the Respondent's registration documents state that it intends to conduct business in the same business field as the Complainant and that there is no suggestion that the term "Siemens" has any sensible meaning other than as a reference to the Complainant's business.
6.7 The Panel also accepts the Complainant's contention that the Domain Name was registered without the authorisation of the Complainant and that the Domain Name does not appear to have been used since registration for any legitimate business activity. Given this, the Panel concludes that the name "Siemens" was adopted in the Respondent's company name and incorporated in the Domain Name with the intention of taking some unfair advantage of the Complainant's rights in that term.
6.8 Exact how the Respondent intended to take unfair advantage of those rights is not clear. The Complainant contends, on the basis of a conversation with Mr Mettini of the Respondent in March 2014, that the Domain Name was registered for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs. Whether or not this is the case, it is difficult to conceive of any use that the Respondent might make of the Domain Name without the Complainant's consent that would not involve bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/ Fayalobi Interaction Management, WIPO Case No. D2008-0455).
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <siemenssrl.com> be transferred to the Complainant.
Matthew S. Harris
Date: August 8, 2014