WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Super Privacy Service LTD c/o Dynadot/Domain Maybe for Sale
Case No. D2020-0915
1. The Parties
The Complainant is Siemens AG, Germany, represented by Müller Fottner Steinecke, Rechtsanwälte PartmbB, Germany.
The Respondent is Super Privacy Service LTD c/o Dynadot/Domain Maybe for Sale, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <siemensadvanta.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2020, 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 April 20, 2020 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 April 21, 2020.
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 April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2020.
The Center appointed Daniel Peña as the sole panelist in this matter on May 29, 2020. 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, a German company, is one of the world’s largest electrical engineering and electronics companies.
The Complainant provides innovative technologies and comprehensive know-how to benefit customers in 190 countries. Founded more than 150 years ago, the company is inter alia active in the areas of Energy, Automation and Control, Power, Transportation, Information, Financial Services and Communications.
The Complainant is the owner of several trademark registration, among others:
International registration No. 637074 SIEMENS of March 31, 1995 in the name of SIEMENS AG, covering more than 60 countries worldwide and claiming protection 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.
European Union Trademark No. 018073615 SIEMENS ADVANTA, filed on May 29, 2019, and registered on March 6, 2020, claiming protection for services in international classes 35, 37, 41 and 42.
The Complainant is also owner of the published European Union trademark application no. 018073617 “Advanta” of May 29, 2019.
The Complainant uses trademark SIEMENS in relation to a wide range of goods and services relating to the above mentioned sectors as to be seen from the global websites of the Complainant available under https://new.siemens.com/global/en/products.html.
The disputed domain name was registered on May 30, 2019. The disputed domain name resolves to a parking page were it is offered for sale.
5. Parties’ Contentions
The disputed domain name identically contains the trademark SIEMENS, which is followed by the somewhat descriptive term “advanta” referring to “advantage”, and followed by the generic Top-Level Domain “.com”. Furthermore, the disputed domain name identically contains the Complainant’s trademark SIEMENS ADVANTA in entirety.
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 trademark SIEMENS is famous. By virtue of long and extensive use, this mark belongs to the best known trademarks in the world today.
Due to the high reputation of the trademark SIEMENS, the public will automatically recognize the mark SIEMENS in the disputed domain name and will associate the domain in dispute with 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 respectively. The Complainant does not have any connection with the Respondent.
The disputed domain name resolves to a landing page where the domain is offered for sale at a purchase price of USD 988.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Considering these requirements, the Panel rules as follows:
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark SIEMENS in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks.
Mere addition of the descriptive term “advanta” as suffix to the Complainant’s mark SIEMENS fails to distinguish. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the disputed domain name also corresponds to the Complainant’s trademark SIEMENS ADVANTA.
The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s marks and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds, based also on the Panel’s further findings below, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the SIEMENS marks is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name.
For this Panel, it cannot be considered a coincidence the fact that the disputed domain was registered following the day when the Complainant filed respective European Union Trademark Applications (EUTM) for “Siemens Advanta” and “Advanta”. Since EUTM applications are published by the EUIPO at the date of their filing, it seems clear that the Respondent knew that the Complainant has an interest in securing the related domain name <siemensadvanta.com>. The Respondent registered the domain name on purpose to prevent the Complainant from adopting the mark SIEMENS ADVANTA in a corresponding domain name.
Further the disputed domain name <siemensadvanta.com> was offered for sale at a price of USD 988. This is far in excess of any apparent registration costs. This falls within paragraph 4(b)(i) of the Policy. The offer at this price is clear evidence of an intention to acquire and sell the disputed domain name for consideration in excess of out-of-pocket expenses.
The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain name <siemensadvanta.com> in bad faith. Therefore, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <siemensadvanta.com>, be transferred to the Complainant.
Date: June 9, 2020