WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Ahmad Haout, Homearab
Case No. D2019-1664
1. The Parties
The Complainant is Siemens AG, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is Ahmad Haout, Homearab, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <siemens-sy.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2019, 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 19, 2019.
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 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on August 16, 2019. 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 Company Siemens AG is one of the world’s largest electrical engineering and electronics companies. Siemens AG provides innovative technologies and comprehensive know-how to benefit customers in 190 countries.
The Complainant was founded more than 150 years ago, and its company is active in the areas of Automation and Control, Household Appliances, Power, Transportation, Information and Communications, etc.
The Complainant is the owner of several trademark registrations for SIEMENS including the following, as per trademark certificates submitted as annexes to the Complaint: International Trademark Registration No. 637074 for SIEMENS figurative mark, registered on March 31, 1995, covering more than 60 countries worldwide, including Syrian Arab Republic, 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 Complainant is also the owner of the domain name <siemens.com>, which was first registered on September 29, 1986, and is used by the Complainant to promote its services worldwide (Syrian Arab Republic included), in industrial automation under the trademark SIEMENS.
The disputed domain name <siemens-sy.com> was registered on June 12, 2010,and is currently pointed to a website promoting the sale of SIEMENS and competitors new and second-hand parts for industrial use.
5. Parties’ Contentions
The Complainant points out that Siemens AG, headquarters in Berlin and Munich, is one of the world’s largest electrical engineering and electronics companies and that the SIEMENS mark is well recognized as a symbol of the highest quality of the concerned goods and services.
The Complainant also highlights that 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 Complainant contends that the disputed domain name <siemens-sy.com> is identical or confusingly similar to the trademark SIEMENS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive geographic country code “sy”, referring to Syrian Arab Republic and of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant states that with reference to rights or legitimate interests in respect of the disputed domain name:
- As the Respondent is in no way connected to the Complainant, he 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.
- By registering the disputed domain name <siemens-sy.com>, the Respondent is also falsely claiming to be an official dealer of the Complainant’s products in that country. Moreover, the Complainant contends that there is a serious risk that visitors will be attracted to the website in the erroneous belief that the website is an official website of, or authorized by, the Complainant.
- The Respondent is also not using the domain name in connection with a bona fide offering of goods or services. He has not been commonly known with the disputed domain name.
- the Respondent offers under its website, automation devices and industrial electric parts by using the trademark SIEMENS in block letters at the top of each website page, in the identical house colour of the Complainant, i.e., the same “petrol blue” colour used by the Complainant for its own trademark.
The Complainant thus concludes that for all the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent knew, or must have known about the Complainant’s rights on the trademark SIEMENS, before registering the disputed domain name and that in deliberately registering the disputed domain name <siemens-sy.com>, the Respondent purposely intended to use the strong worldwide reputation of the Complainant’s mark SIEMENS, in order to confuse the public and cause damage to the Complainant in disrupting its business.
The Complainant asserts that since it owns and uses for business purposes, various domain names consisting of the sign SIEMENS (i.e.,: <siemens.com>, <siemens.eu>, <siemens.de>, <siemens-home.com>, <siemens-ua.com>, etc), the disputed domain name must have undoubtedly been registered in order to prevent the Complainant from adopting the mark SIEMENS in a corresponding domain name.
Moreover, the Complainant highlights that the use in bad faith of the disputed domain name is further accentuated by the relevance of the website content, as it shows the SIEMENS exact trademark and offers products and services in the field of automation, for which the mark SIEMENS has been used and has acquired a high reputation over the years.
In addition, the Complainant points out that the Respondent’s use of the trademark SIEMENS in the contact details could also be perceived as a reference to a Syrian affiliated company, as the email address incorporates the wording: “siemens.plc” (public limited company) and the link to Google Maps, refers to a “Siemens Syria plc” office, thus clearly suggesting a connection to the Complainant and/or appearing to be an official or authorized website for the sale of SIEMENS automation devices.
The Complainant further emphasizes, that by using its trademark and trade dress, the Respondent is misrepresenting itself as being somehow related to the Complainant and that as the websites do not disclaim the relationship between the Respondent and the Complainant. Furthermore, there is nothing material or prominent on the website dispelling the connection between the Respondent and the Complainant.
Moreover, the Complainant asserts that it is evident that the Respondent, is not only well aware of the notorious trademark SIEMENS, whose reputation is world renowned, but also does not make any legitimate or fair use of the disputed domain name, and that there is nothing to suggest that he would not aim at misleadingly diverting consumers or tarnishing the Complainant’s trademark.
In this regard, the Complainant also concludes that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent 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 Panel finds that the Complainant has established rights over the trademark SIEMENS based on the trademark registration cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Complainant’s trademark SIEMENS is entirely reproduced in the disputed domain name, with the mere addition of a hyphen and “sy”, which may also be interpreted to be referring to the geographic two letters country code of Syrian Arab Republic, and of the gTLD “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating, in particular but without limitation, according to paragraph 4(c) of the Policy, any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with the UDRP precedents, it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Respondent has been using the disputed domain name to advertise and sell purported SIEMENS and competitors’ products. According to section 2.8.1 of the WIPO Overview 3.0, “resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”
In the case at hand, there is no evidence on records of any agreement between the Parties as to the resale of SIEMENS products and/or the authorization or prohibition to register the disputed domain name. Therefore, the Panel shall evaluate the presence of the cumulative requirements prescribed by the “Oki Data test” to determine whether the Respondent could be making a bona fide offering of goods and services and thus have a legitimate interest in such disputed domain name.
According to the screenshots submitted by the Complainant and the Panel’s review of the Respondent’s website published at the disputed domain name, the first condition could be prima facie met as the Respondent appears to actually offer for sale SIEMENS products, and does not appear to “corner the market’” in domain names that reflect the trademark, the second and third conditions are certainly not fulfilled, since the Respondent is advertising and selling also products of competitors on the website at the disputed domain name, and has not published an accurate and prominent disclaimer aimed at informing users about its relationship with the trademark owners. Rather, the Respondent appears to simply indicate that it is a distributor of the Complainant’s products in its “contact us” section at the website under the disputed domain name.
In view of the above, the Panel finds that the Respondent is not making a bona fide offering of goods or services under the disputed domain name. Moreover, since the Respondent’s activity on its website is clearly commercial in nature, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks and there is no evidence that the Respondent might be commonly known by the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
As to the bad faith at the time of the registration, the Panel notes that, in light of the amount of advertising and sales of the Complainant’s products worldwide and overall the fact that the Respondent is apparently acting in the same field of activity as the Complainant, and was also selling the Complainant’s products, the Respondent was or ought to be well aware of the Complainant’s trademark.
Furthermore, the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s trademark and providing information about the Complainant’s products, demonstrates that the Respondent was indeed well aware of the Complainant and its trademark.
In light of the fact that the Complainant’s mark is a coined term and that the Respondent made reference to the Complainant’s SIEMENS products on the website to which the disputed domain name resolves, the Panel finds that the Respondent obviously registered the disputed domain name with the Complainant’s trademark in mind.
Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration by registering the disputed domain name with a deliberate intent to create an impression of an association with the Complainant, when the Respondent has no connection with the Complainant whatsoever.
The Panel also finds that, by pointing the disputed domain name to a website promoting and offering for sale prima facie SIEMENS products, and also competing products, the Respondent also fails to accurately and prominently disclose its relationship with the trademark owners. Therefore, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the trademark SIEMENS as to the source, sponsorship, affiliation or endorsement of its website and the products promoted therein according to paragraph 4(b)(iv) of the Policy.
The Panel also notes that the Respondent has used the disputed domain name in a commercial website reproducing the Complainant’s trademark, thus clearly suggesting to Internet users a connection with the Complainant. Therefore, the evidence before the Panel indicates that the Respondent has used the disputed domain name for the purpose of some apparently commercial nature from which the Respondent presumably derives or intends to derive revenues. This conduct is not consistent with registration and use in good faith under the Policy, and the Panel rules in favour of the Complainant.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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 <siemens-sy.com> be transferred to the Complainant.
Date: August 26, 2019