WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Li Chang Kong
Case No. D2017-1968
1. The Parties
The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is Li Chang Kong of Chongqing, China, self-represented.
2. The Domain Names and Registrars
The disputed domain name <siemens-alstom.info> is registered with West263 International Limited.
The disputed domain names <siemens-alstom.net>, <siemensalstom.net>, <siemens-alstom.shop> and <siemensalstom.shop> are registered with Chengdu West Dimension Digital Technology Co., Ltd.
The disputed domain names <siemens-alstom.org> and <siemensalstom.org> are registered with HiChina Zhicheng Technology Ltd.
West263 International Limited, Chengdu West Dimension Digital Technology Co., Ltd. and HiChina Zhicheng Technology Ltd. are hereinafter individually or collectively named as the "Registrar(s)".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2017. On October 10, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 11, 2017, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On October 13, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 14, 2017, the Respondent requested for Chinese to be the language of the proceeding. On October 16, 2017, the Complainant confirmed its request that English be the language of the proceeding. On October 16, 2017, the Respondent again objected to the Complainant's language request and requested that Chinese shall be the language of the proceeding.
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 October 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2017. An informal Response was filed by the Respondent with the Center on October 30, 2017. Absent further response and communication from the Respondent, the Center informed the Parties that it would proceed to Panel Appointment on November 9, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 17, 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.
4. Factual Background
The Complainant, Siemens AG, headquartered in Berlin and Munich, is one of the world's largest electrical engineering and electronics companies. The complainant provides technologies to customers in approximately 190 countries. The Complainant is active, among others, in the areas of Automation and Control, Power, Transportation, Information and Communications.
The Complainant's trademark SIEMENS is used in the mobility, transportation and rail business in China and other jurisdictions.
The complainant is the owner of International Registration No. 637074 for SIEMENS, registered on March 31, 1995, in the name of SIEMENS AG, covering more than 60 jurisdictions worldwide, among others China, and claiming protection for goods and services in numerous classes.
The trademark ALSTOM is registered in the name of the company "Alstom", which is proprietor of International Registration No. 706360 for ALSTOM covering, among others, China and claiming protection for goods in international class 12.
A merger between the Complainant, Siemens AG, and Alstom has been agreed upon and reported in the media. The disputed domain names are comprised of the name of the Complainant and Alstom.
The Complainant is also the owner of several domain names comprising its SIEMENS trademarks, for example: <siemens.com>, <siemens.de> and <siemens.cn>.
According to the publicly-available WhoIs information, all of the seven disputed domain names were registered on September 27, 2017. The disputed domain names are currently inactive.
5. Parties' Contentions
The Complainant argues that the disputed domain names are confusingly similar to the Complainant's famous and registered mark SIEMENS because it contains the Complainant's mark in its entirety.
The Complainant argues that the Respondent started using the disputed domain names long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark SIEMENS.
The Complainant further argues that the Respondent is not known under the disputed domain names and is not authorized by the Complainant to use the disputed domain names, which are associated with the Complainant. It is further alleged that the Respondent has never used and does not intend to use the mark SIEMENS in connection with a bona fide offering of goods or services or in any other legitimate commercial or noncommercial way. Therefore, the Complainant argues that the respondent has no rights or legitimate interest in the disputed domain names.
The Complainant further argues that the Respondent has no right or legitimate interest in respect of the disputed domain names and has registered and used it in bad faith. It is further alleged that the Respondent knew that the Complainant and Alstom intend to merge and registered the disputed domain names, in particular, to prevent the Complainant from adopting the mark SIEMENS and ALSTOM in corresponding domain names.
Finally, the Complainant argues that the Respondent intended to use the strong reputation throughout the world of the Complainant's trademark SIEMENS in order to confuse the public and to cause damage to the Complainant in disrupting its business.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names.
The respondent requested that the proceeding will be in Chinese since the Registration Agreements of the disputed domain names are in Chinese.
The Respondent claimed that he registered the disputed domain names as its personal hobby and that he did not intend to infringe on the rights of the Complainant.
The Respondent further argues that he did not use the disputed domain names in an illegal manner or in a manner which is averse to the Complainant.
The respondent further argues that the merger of the Complainant and Alstom is not a certainty and that the announcement of the merger should not be the ground to bring an action against him.
Finally, the Respondent stated that he did not act in bad faith.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreements for the disputed domain names is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent requested that the language of the proceeding be Chinese.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain names consist of Latin letters, rather than Chinese characters;
(ii) The Respondent has sufficient knowledge in English as it provided a response to the allegation made by the Complainant;
(iii) The Complainant would have to incur significant expense in translating the Complaint and attached annexes into the Chinese language;
(iv) The proceeding would have to be delayed considerably.
Upon considering the above, the Panel determines that English be the language of the proceeding.
6.2. Substantive Issues
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the SIEMENS mark. For example: International Trademark Registration No. 637074 for SIEMENS, registered on March 31, 1995, in the name of SIEMENS AG, covering more than 60 jurisdictions worldwide, among others, China, and claiming protection for numerous goods and services.
The disputed domain names <siemensalstom.net>, <siemens-alstom.net>, <siemens-alstom.info>, <siemensalstom.org>, <siemens-alstom.org>, <siemensalstom.shop> and <siemens-alstom.shop> integrate the Complainant's SIEMENS trademark in its entirety. The disputed domain names and the Complainant's trademark differ in the additions of a hyphen, the name of the company which the Complainant has announced its merger with – "alstom", and the generic Top-Level Domains ("gTLD") ".info", ".org", ".net" and ".shop".
The additional components of a hyphen, and the name of another company which the Complainant has announced a merger – "alstom", does not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant's trademark. Moreover, previous UDRP panels have found that when a complainant's trademark is recognizable, the addition of another-third party mark is insufficient in itself to avoid a finding of confusing similarity to the complainant's mark. The present case is no exception, as it is highly likely that the disputed domain names will create confusion among consumers, who will associate them with at least the Complainant (see Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (<chevron-texaco.com>); Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195 (<yahooebay.org>, et al.); Bayerische Motoren Werke AG v. Gary Portillo, WIPO Case No. D2012-1937 (<rockvilleaudibmw.com>, et al.); Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603 (<gucciipadcase.net>, et al.)). The likelihood of confusion is especially likely when the Complainant and Alstom have announced their intent to merge which will generate in the eyes of the public an expectation to see their two names used jointly.
Finally, the addition of gTLD does not avoid confusing similarity as they are without significance in the present case since the use of a gTLD is technically required to operate a domain name (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services and holds no trademark registration for any SIEMENS mark.
In his brief response, the Respondent did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant's prima facie case.
The Respondent did not contend that it was not aware of the Complainant and/or Alstom, nor did it deny its awareness of the fact that they announced their intent to merge. The Respondent's bare argument that he registered the disputed domain names for personal hobby is vague as it has provided no evidence or explanation to corroborate such hobby. Given that the disputed domain names are inactive and for the reasons stated above, the Panel concludes that the Respondent failed to traverse the prima facie case made by the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the SIEMENS trademark since at least March 31, 1995, while the Respondent registered the disputed domain names since September 27, 2017. In addition, the Respondent registered the disputed domain names a short while after the merger agreement between the Complainant and Alstom was published in the media. In view of the evidence filed by the Complainant, the timing of registrations of the disputed domain names and the widespread use of the SIEMENS trademark, it is suggestive of the Respondent's bad faith in these particular circumstances (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
In addition, the Respondent simultaneously registered seven domain names with different combinations of the marks "siemens" and "alstom". These multiple registrations constitute evidence of a pattern of bad faith conduct (see Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010 (<homeinteriors.net>, et al.); Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (<i-telstra.com>, et al.)).
The disputed domain names are currently not in use. Prior UDRP panels have long found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>); Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (<jupiterscasino.com>)).
Reviewing the totality of the circumstances in this case, including the registrations of the disputed domain names long after the registration of the Complainant's marks, the degree of distinctiveness or reputation of the Complainant's SIEMENS trademark, the failure of the Respondent to provide any evidence of actual or contemplated good faith use, coupled with the implausibility of any good faith use to which the disputed domain names may be put to, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, without prejudice to the rights of Alstom, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <siemens-alstom.info>, <siemens-alstom.net>, <siemensalstom.net>, <siemens-alstom.org>, <siemensalstom.org>, <siemens-alstom.shop> and <siemensalstom.shop> be transferred to the Complainant.
Date: November 29, 2017