WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. John Badr, Adtivities Co
Case No. D2015-1595
1. The Parties
The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is John Badr, Adtivities Co of Beirut, Lebanon.
2. The Domain Name and Registrar
The disputed domain name <siemenselevators.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 7, 2015. On September 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 September 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2015. An informal Response was filed with the Center on September 28, 2015, claiming that the Respondent had merely registered the disputed domain name as an agent for third parties based in Nigeria and indicating that the third parties had agreed to "stop the domain online and use another name for their business starting October 4, 2015". Following a notification by the Center to the parties on September 30, 2015, the Complainant informed the Center by email of October 6, 2015 that it was not interested in submitting a request for suspension to explore settlement options.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 12, 2015. 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 Complainant is one of the world's largest electrical engineering and electronics companies, founded more than 150 years ago with customers in 190 countries. The Complainant is the owner of the International Registration trademark SIEMENS (No. 637074), covering more than 60 countries, and the Community trademark SIEMENS (No. 4240263).
The disputed domain name was registered on November 28, 2014. The Respondent appears to have used the disputed domain name for a website of the alleged company "Siemens Elevators" located in Nigeria.
5. Parties' Contentions
In summary, the Complainant contends the following:
The trademark SIEMENS is contained identically in the disputed domain name and combined with the term "elevators". The additional term "elevators" is merely descriptive as it indicates that the Complainant would use the disputed domain name to offer "elevators". This additional term does not alter the dominating character of the SIEMENS mark in the disputed domain name.
The website corresponding to the disputed domain name does not promote any own business of the Respondent, since it systematically refers to the Siemens group and an alleged company "Siemens Elevators". However, neither the Respondent nor the alleged company "Siemens Elevators" is or has ever been one of the Complainant's representatives, employees or licensees. Therefore, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
Rather, the Respondent aims at misleadingly diverting consumers and/or at tarnishing the trademark SIEMENS. The disputed domain name was selected by the Respondent with intent to attract Internet users for illegitimate purposes and to cause damage to the Complainant. For these reasons, the disputed domain name was registered and is being used in bad faith.
In an email of September 28, 2015, the Respondent stated that it was merely an agency that registered the disputed domain name on behalf of third parties in Nigeria, without commenting on the merits of the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is comprised of the Complainant's trademark SIEMENS and the suffix "elevators". UDRP panels have consistently held that the addition of merely generic or descriptive terms to a trademark in a domain name would typically be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). Considering that the Complainant is active in the global electrical engineering business, the addition of the generic term "elevators" to the Complainant's famous trademark is insufficient to prevent a finding of confusing similarity. The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
Based on the Complainant's contentions, the Panel finds that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Conclusive evidence presented by the Complainant in these proceedings (Annex 6 to the Complaint) suggests that the disputed domain name has been registered and, for a certain period of time, was being used to simulate a website of a subsidiary of the Complainant. This is evidence of bad faith (cf. also the very similar fact pattern in Siemens AG v. Cong Ty Tnhh Thuong Mai Va Dich Vu Thuan Anh, Thuan Anh Services and Trading Company Limited / Thuan Anh Trading & Service Co., Ltd / Thuan Anh Trade and Service Company Ltd., WIPO Case No. D2013-0920). Currently, the disputed domain name appears to be inactive.
It is apparent under these circumstances that the Respondent has registered and is using the disputed domain name to divert Internet traffic to unrelated websites pretending to offer services by the Complainant, for the purpose of achieving commercial gain. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Complainant has thus also satisfied 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 disputed domain name <siemenselevators.com> be transferred to the Complainant.
Date: October 26, 2015