WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Siemens AG v. Hu Liang Liang

Case No. D2017-1897

1. The Parties

The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.

The Respondent is Hu Liang Liang of Zhejiang, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <siemensalstom.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2017. On September 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 9, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 10, 2017. The Respondent requested that Chinese be the language of the proceeding on October 11, 2017.

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. The Respondent did not submit any substantive response.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 21, 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 SIEMENS registered on March 31, 1995, covering more than 60 countries 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 ALSTOM covering, among others, China and claiming protection for goods in numerous international classes.

A merger between the Complainant Siemens and Alstom has been agreed upon. The disputed domain name is comprised of the name of the Complainant and the name of Alstom.

The Complainant is also the owner of several domain names comprising its SIEMENS trademarks, for example: <siemens.com>, <siemens.de> and <siemens.cn>.

The disputed domain name was registered on September 22, 2017. It does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is 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 name 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 name and is not authorized by the Complainant to use the disputed domain name, which is 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 interests in the disputed domain name.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name 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 name, 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 name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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 Agreement for the disputed domain name 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 name consists of Latin letters, rather than Chinese characters;

(ii) The Complainant would have to incur significant expense in translating the Complaint and attached annexes into the Chinese language;

(iii) 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 name is 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 SIEMENS registered on March 31, 1995, covering more than 60 countries worldwide, among others, China, and claiming protection for numerous goods and services.

The disputed domain name <siemensalstom.com> integrates the Complainant’s SIEMENS trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the additions of the name of the company with which the Complainant has announced its merger — “alstom” — and the generic Top-Level Domain (“gTLD”) “.com”.

The additional component “alstom” being the name of another company with which the Complainant announced its merger does not serve sufficiently to distinguish or differentiate the disputed domain name 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 (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.)).

Finally, the addition of a gTLD does not serve to avoid confusing similarity as it is 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 name is 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 of 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 name 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.

The Respondent did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name 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 name 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 owned the disputed domain name since September 22, 2017. In addition, the Respondent registered the disputed domain name 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 registration of the disputed domain name and the widespread use of the SIEMENS trademark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Furthermore, the disputed domain name contains the Complainant’s trademark in its entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

As the Complainant evidenced (see Annex 10 to the Complaint), the Respondent registered simultaneously two domain names with different combinations of the marks SIEMENS and ALSTOM: the disputed domain name and <alstomsiemens.com>. Furthermore, the Complainant provided evidence showing that the Respondent has acted in the same manner in similar circumstances: after the announcement of the merger between the companies Thyssen Krupp and Tata, the Respondent registered a domain name comprised of the names of the two companies — <thyssenkrupptata.net>. Such behavior is evidence of bad faith registration of the disputed domain name.

The Respondent also appears to be the owner of 258 domain names, among them domain names that incorporate different third-party trademarks. The multiple registrations directed at the Complainant, the previous instance of similar circumstances to this proceeding, and the registration of multiple trademark abusive domain names, all 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.); Investone Retirement Specialists, Inc. v. Motohisa Ohno, WIPO Case No. D2005-0643 (<investone.com>); Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968 (<playboys.mobi>); AMPO, S. COOP v. Contactprivacy.com, Taeho Kim, Philippine, WIPO Case No. D2009-0177 (<ampo.com>); Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798 (<wikipeadia.com>); Bestway Holdings Ltd v. Bkarato, AK Bkarato, WIPO Case No. D2012-2485 (<bestwaygroup.com>)).

The disputed domain name is currently not in use. 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 registration of the disputed domain name in view of the merger announced between the Complainant and Alstom, being long after the registration of the Complainant’s marks, the degree of distinctiveness or reputation of the Complainant in the SIEMENS trademark, the failure of the Respondent to respond substantively to the Complaint, the Respondent’s apparent pattern of bad faith behavior, coupled with the implausibility of any good faith use to which the disputed domain name may be put, the Panel draws the inference that the disputed domain name was registered and is 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.

7. Decision

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 name <siemensalstom.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: November 30, 2017