WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service) / li zhe, zhe li
Case No. D2017-0375
1. The Parties
The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke Part mbB, Germany.
The Respondent is yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service) of Chengdu, Sichuan, China / li zhe, zhe li of Anyang, Henan, China.
2. The Domain Names and Registrar
The disputed domain name <gamesa-siemens.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain name <siemens-gamesa.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrars").
3. Procedural History
The Complaints regarding the disputed domain names <gamesa-siemens.com> and <siemens-gamesa.com> were filed separately with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On February 24, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 25, 2017, the Registrar Chengdu West Dimension Digital Technology Co., Ltd 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 March 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 1, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on March 2, 2017. The Respondent did not comment on the language of the proceeding.
On February 27, 2017, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Since the underlying Respondents in the two Complaints are the same, the Complainant filed an amended Complaint on March 6, 2017 and March 9, 2017, requesting to consolidate the proceedings regarding the disputed domain names <gamesa-siemens.com> and <siemens-gamesa.com>.
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 in English and Chinese of the Complaint, and the proceeding commenced on March 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on April 12, 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 is a German multinational and is one of the world's largest electrical engineering and electronics companies. The Complainant is the registered proprietor of the trademark SIEMENS in various countries in numerous classes, including International Registration No. 637074 SIEMENS registered on March 31, 1995 (registration number 637074) in the name of SIEMENS AG, covering more than 60 countries worldwide, including China, 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.
The trademark GAMESA is registered in the name of Gamesa Corporacion Tecnologica, S.A. who is proprietor of the International Registration No. 1104296 for GAMESA and device covering China and claiming protection for goods in international class 7.
The Complainant has recently merged with Gamesa Corporacion Tecnologica, S.A. The discussions relating to the merger were made public in January 2016.
The Respondent appears to be an individual based in China. The disputed domain name <gamesa-siemens.com> was registered on March 30, 2016 and the disputed domain name <siemens-gamesa.com> was registered on March 23, 2016. Both disputed domain names are currently not used in connection with an active website.
5. Parties' Contentions
Identical or confusingly similar
The Complainant argues that the disputed domain names <gamesa-siemens.com> and <siemens-gamesa.com> are made entirely up of the registered trademarks SIEMENS and GAMESA to which generic Top-Level Domain ("gTLD") ".com" has been added. The disputed domain names are composed of two trademarks relating to the Complainant and reflecting its merger with Gamesa Corporacion Tecnologica, S.A involved in the wind industry.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain names and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for SIEMENS or GAMESA. Furthermore, there is no evidence of the Respondent's use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. No websites are active under the disputed domain names.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant's rights in the SIEMENS and registered the disputed domain names to confuse the public and disrupt the business of the Complainant. The disputed domain names were registered in March 2016 after it had been reported the Complainant and Gamesa Corporacion Tecnologica, S.A. were considering a merger.
Further, the Respondent's registration of the disputed domain names prevents the Complainant from reflecting its trademarks in a corresponding domain name and the Respondent has engaged in a pattern of such conduct by registering domain names such as <bayermonsanto.net>, <lindepraxair.net> and <praxairlinde.net> which incorporate two names of well-known companies.
Even though the disputed domain names have 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 (<telstra.org>)).
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement regarding the disputed domain name <gamesa-siemens.com> is Chinese. Paragraph 11(a) of the Rules provides that:
"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 Complainant requested the language of the proceeding to be English on grounds that English is the most widely used language for international communications and that the Respondent had communicated with the Complainant in English. There would be delay in translating the Complaint which would be unfair on the Complainant.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center's invitation to comment on the language of proceeding or object to the Complainant's request. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to an invitation by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
The Panel considers the merits of the case to be strongly in favour of the Complainant. The Respondent has written to the Complainant in English indicating it understands English. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel notes that the GAMESA mark is registered to Gamesa Corporacion Techologica, S.A. and not the Complainant. However, noting that the Complainant has acquired Gamesa Corporacion Techologica, S.A., the Panel finds that the Complainant has sufficient rights in both trademarks for the purposes of the Policy.
The disputed domain names <gamesa-siemens.com> and <siemens-gamesa.com> are made up of the registered trademarks SIEMENS and GAMESA and the gTLD ".com". The disputed domain names are confusingly similar to the registered trademarks SIEMENS and GAMESA.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can demonstrate its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names <gamesa-siemens.com> and <siemens-gamesa.com> were registered in bad faith and are being used in bad faith.
While the disputed domain names have not been used, this does not as such prevent a finding of bad faith (see paragraph 3.2 of the WIPO Overview 2.0). The disputed domain names comprise of the whole of the Complainant's mark SIEMENS mark and the mark GAMESA. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant's reputation and the fact the disputed domain names were registered after the Complainant announced its merger with Gamesa. The Panel finds that the Respondent's registration and passive holding of the disputed domain names in the circumstances of the present proceeding accounts to registration and use of the disputed domain names in bad faith.
Further, the registration of other domain names made up of the names of well-known companies indicates that the Respondent is engaged in a pattern of conduct of registering other companies' trademarks as domain names for the purposes of preventing owners from reflecting their marks in a corresponding domain name in breach of paragraph 4(b)(ii) of the Policy. This is also in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 names, <gamesa-siemens.com> and <siemens-gamesa.com> be transferred to the Complainant.
Date: April 24, 2017