WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Timo Uustal, Facilitation OU
Case No. D2018-1537
1. The Parties
The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Timo Uustal, Facilitation OU of Tartu, Estonia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <siemens-consulting.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 July 10, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name. The Center sent an email communication to the Complainant on July 11, 2018 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 12, 2018.
The Center received an email communication from the Respondent on July 12, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2018. The Response was filed with the Center on August 2, 2018.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 7, 2018. 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 is proprietor of an International trademark registration for SIEMENS, reg. No. 637074, with registration date March 31, 1995, designated in more than 60 countries worldwide, including Estonia, and registered for goods and services in international 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.
The disputed domain name was registered on September 13, 2015, and resolves to a "website coming soon" page.
5. Parties' Contentions
The Complainant mainly alleges the following.
The mark SIEMENS is famous. By virtue of long and extensive use, this mark belongs to the best known trademarks in the world today.
The SIEMENS mark is well recognized as a symbol of the highest quality of the concerned goods and services. By virtue of the Complainant's long use and the renown of the Complainant's SIEMENS mark, SIEMENS is exclusively associated with the Complainant. The reputation associated with the Complainant's mark is excellent by virtue of the quality of the Complainant's goods and services.
The disputed domain name <siemens-consulting.com> is confusingly similar to the Complainant's mark SIEMENS.
The disputed domain name identically contains the trademark SIEMENS, which is followed by the descriptive indication "consulting", referring to consultancy services offered in relation to products or services of the mark SIEMENS, and the generic Top-Level Domain ("gTLD") ".com".
The Complainant uses its famous trademark SIEMENS in relation to consulting services.
Due to the high reputation of the trademark SIEMENS, the public will automatically recognize the mark SIEMENS and will associate the disputed domain name with the Complainant. Internet users will think that this domain name and the corresponding website belong to the Complainant providing consultancy services offered in relation to products or services of the mark SIEMENS. Consequently, Internet users will have the false impression that the address "www.siemens-consulting.com" is an additional official Internet address of the Complainant.
The Respondent is not and has never been one of the Complainant's representatives, employees or one of its licensees or is otherwise authorized to use the trademark SIEMENS. The Complainant does not have any connection with the Respondent.
The Respondent is not using the domain name in connection with a bona fide offering of goods or services. It has not been commonly known with the domain name. The website corresponding to the domain name "siemens-consulting.com" is currently not active.
The Respondent is or should have been well aware of the well-known trademark SIEMENS, whose status of reputation has been assessed by the UDRP panels in various cases (cf. Siemens AG v. Dorofeev, Konstantin,
WIPO Case No. D2013-0923, Siemens AG v. Mr. Ozgul Fatih,
WIPO Case No. D2010-1771 and Nokia Corporation, Siemens AG, Nokia Siemens Networks Oy v. Chen Fang Fang,
WIPO Case No.
D2008-1908). The high reputation of the mark follows also from the fact that it has extensively been used throughout the world since decades prior to the registration of the domain name "siemens-consulting.com".
Therefore, it is evident that the Respondent does not make any legitimate noncommercial or fair use of the domain name and there is nothing to suggest that the Respondent would not aim at misleadingly diverting consumers or at tarnishing the trademark and service mark at issue. The 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 Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered in bad faith as the Respondent knew or should have known about the Complainant's earlier rights on the trademark SIEMENS. In deliberately registering the domain name <siemens-consulting.com> which identically contains the famous trademark SIEMENS, 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.
In particular, the domain name was registered in order to prevent the Complainant from adopting the mark SIEMENS in a corresponding domain name. The Complainant already owns and uses for business purposes various domain names consisting of the sign "siemens", such as <siemens.com>, <siemens.eu>, <siemens.de>, <siemens-home.com> etc. Therefore, it was very conceivable for the Respondent that the disputed domain name would be of relevance for the Complainant to offer its services in trade.
The disputed domain name is being used in bad faith. The Respondent's registration of the disputed domain names prevents the Complainant from reflecting its trademarks in a corresponding domain name. Even though the disputed domain name has not been used, the passive holding of a domain name amounts to use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Siemens AG v. yinsi baohu yi kai qi / li zhe, zhe li, WIPO Case No. D2017-0375).
It is difficult to conceive of any use that the Respondent might make of the disputed 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). For these reasons, the disputed domain name has to be regarded as registered and being used in bad faith.
The Respondent has mainly stated the following.
The disputed domain name consists of an acronym for "SIberian EMotions ENSemble" and the word consulting. The website was supposed to be a gift for the Respondent's grandfathers so that they could share their stories from the harsh experiences of World War II ("WWII"), the Soviet occupation, and mass deportation of Estonians to Siberia. The website is still under construction.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the proprietor of an international trademark registration for SIEMENS, designated in numerous jurisdictions. The disputed domain name contains the trademark in its entirety together with a hyphen, the word consulting and the gTLD ".com". It is well established among UDRP panels that the gTLD is not distinguishing. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's trademark and that the first requirement of the Policy is fulfilled.
B. Rights or Legitimate Interests
With reference to section 2.1 of the WIPO Overview 3.0, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is further an undisputed fact that there has been a lack of activity on the website since its registration. There is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. The Respondent has, in the Panel's opinion, not proven a right or a legitimate interest in the disputed domain name. While the Respondent claimed that it had taken certain limited steps in gathering material for its proposed website, it has provided no supporting evidence but rather provided a list of other domain names incorporating the Complainant's trademark which are available for registration. In such circumstances, the Respondent has failed to establish demonstrable preparations to use the disputed domain name (WIPO Overview 3.0, section 2.2). The Panel finds that the second requirement of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Complainant's registered trademark long predates the disputed domain name. Given the widespread knowledge about the Complainant it is further not probable that the Respondent registered the disputed domain name without knowledge of the Complainant or its trademark. The Panel additionally notes that there has not been any activity on the website since its registration and that no evidence of work towards launching the supposed website about stories from the Respondent's grandfathers' harsh experiences of WWII, Soviet occupation, and mass deportation of Estonians to Siberia have been submitted. The Panel does not find the Respondent's explanation of intended use of the website nor its arguments with regard to "siemens" being an acronym for "SIberian EMotions ENSemble" plausible and the Panel's conclusion is therefore that a good faith intention and use of the website is improbable. The Panel finds that the third requirement of the Policy is fulfilled.
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 <siemens-consulting.com> be transferred to the Complainant.
Date: August 21, 2018