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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Framatome, Siemens Aktiengesellschaft and Framatome ANP v. Manu&Gil

Case No. D2001-1424

 

1. The Parties

A) The complainants

The first complainant is Siemens Aktiengesellschaft, a German company with its registered office at Wittelsbacherplatz 2, 80 333 München, Germany.

The second complainant is Framatome, société anonyme, a French company with its registered office at 1 place de la Coupole, 92 400 Courbevoie, France.

The third complainant is Framatome Anp, société par actions simplifiée, a French company with its registered office at 1 place de la Coupole, 92 400 Courbevoie, France.

B) The respondent

The respondent is Manu&Gil, Manuel Gil Garcia, Ruiz Aznar 7 2A, Granada, 18 008, Spain.

 

2. Domain Name and Registrar

This dispute concerns the domain name <framatome-siemens.com>.

The Registrar with which the domain name is registered is Register.com, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center ) received the e-mail version of the complaint on December 5, 2001. The Center received the hardcopy version of the complaint on December 10, 2001. On December 12, 2001, the Center sent a request for registrar verification in connection with this case to Register.com and received the registrar verification.

The notification of the complaint was made on December 14, 2001, setting January 3, 2002, as the due date for the response. No Response was received. The Notification of respondent’s default was made on January 4, 2002. The panelist was appointed on January 17, 2002.

 

4. Factual Background

Framatome is the owner of 22 trademarks including the term "FRAMATOME", and particularly the following trademarks :

- FRAMATOME n.1 581 425, French trademark, that has been filed on June 7, 1989;

- FRAMATOME n. 557 787, international trademark, that has been registered on May 10, 1990.

Siemens is the owner of 57 trademarks including the term "SIEMENS" and particularly the following trademarks :

- SIEMENS n. 504 324, international trademark, that has been registered on April 4, 1986;

- SIEMENS n. 637 074, international trademark, that has been registered on March 31, 1995;

- SIEMENS n. 732 575, international trademark, that has been registered on February 2, 2000.

In 1999, Framatome and Siemens engaged in negotiations for a merger between the two companies for nuclear activities, and the international and Spanish press commented on these negotiations as early as June, 1999. The merger of the two companies was officially announced by Framatome and Siemens on December 6, 1999. This news was mentioned on radio, television, press and online press as soon as it was announced by Framatome and Siemens. The domain name in dispute was registered exactly the day when Framatome and Siemens officially made their declaration, that is on December 6, 1999.

 

5. The Parties’ Contentions

A) The complaint

The complaint alleges that :

The domain name <framatome-siemens.com> is confusingly similar to the trademarks FRAMATOME and SIEMENS;

The respondent has no rights or legitimate interests in respect of the domain name <framatome-siemens.com>;

The respondent has registered and is using this domain name in bad faith. The respondent registered the domain name on the same day as the Framatome and Siemens companies publicly announced their merger. In doing so the respondent has prevented the two companies from exploiting their trademarks and developing websites on their common domain name.

B) The Response

The respondent has not forwarded any response.

 

6. Discussion and Findings

A) Identical or Confusingly Similar Domain Name

Framatome widely uses its FRAMATOME trademarks in order to offer services relating to both energy and connectics. In these domains Framatome is one of the world leaders. In those circumstances nobody could ignore Framatome’s rights upon the name FRAMATOME. The Framatome company has already been a victim of cybersquatting behavior. In the 1997 decision of a French court the judges found that the registration of the domain name <framatome.com> by an association of Internet surfers was a deed of unfair competition and that it was an attack on the trademark and trade name of Framatome, all the more shocking because Framatome benefits from a worldwide notoriety (see Ordonnance de référé of April 25, 1997 of the Tribunal de Grande Instance de Paris, which can be seen at <www.legalis.net/legalnet>).

As for Siemens, its activities are diversified in many commercial domains that range from information and communications, automation and control to health care, transportation and real estate. Siemens uses its SIEMENS trademarks in order to offer goods and services in the scope of these activities and those trademarks are well known worldwide.

Their new common company is Framatome ANP. It uses the trademarks of both Siemens and Framatome on its web site.

The domain name <framatome-siemens.com> consists of two words that are respectively "siemens" and "framatome". The word "siemens" is identical to the first complainant’s trademarks. The word "framatome" is identical to the second complainant’s trademarks. It is also a word that is confusingly similar to the third complainant’s company name.

Therefore the domain name <framatome-siemens.com> is identical to the complainants’ trademarks and trade name.

B) Respondents Rights or Legitimate Interests in the Domain Name

The respondent’, defaulting in the present proceedings, has not provided evidence of any circumstance giving rise to a right or legitimate interest in the domain name.

C) Domain Name Registered and Used in Bad Faith

In accordance with the ICANN Policy, paragraph 4(b), the bad faith of a respondent follows from:

- circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name; or

- the fact that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or

- the fact that the domain name was primarily registered for the purpose of disrupting the business of a competitor.

When he registered the domain name, Manu & Gil, Manuel Gil Garcia most probably knew that the merger between Framatome and Siemens had been announced. Manu & Gil, Manuel Gil Garcia’s bad faith is evidenced by the fact that the domain name <framatome-siemens.com> was registered on December 6, 1999, exactly the same day as the merger of the two companies had been officially announced the world over. Thus, the complainants cannot use a website on an Internet address which would mirror the result of this merger to the public. The complainants are thus unjustly hindered by the respondent in their effort to use their trademarks and trade names on the Internet.

The facts are similar with the case Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO case No. D2000-0433. In that case the respondent registered several domain names combining the two companies trademarks on Saturday, January 22, 2000, which was the day the merger of the two companies had been officially and universally announced. The Panel pointed out that the bad faith of the respondent was demonstrated by the timing of the registration, which was not made for a legitimate business purpose.

It has been adjudicated by an ordinary court of law that the offensive registration of a trademark which a company resulting from a merger could legitimately use is an abusive registration (see the decision of the Cour d’appel de Paris on March 17, 1977 in which the trademark PUK was registered after the merger between the companies Péchiney and Ugine Kuhlmann was announced; in Annales de la propriété industrielle 1978, 29). There is no reason that it should not be so for the registration of domain names.

The respondent has not submitted any response to the complaint. It is therefore unknown what use he could have had for the domain name in issue. Meanwhile, the website at the domain name in question is under construction; even though the domain name is not active the complainants are prevented from using their respective trademarks in combination. As a result, the panel finds that the domain name has been registered and is being used in bad faith.

 

7. Decision

In the light of the foregoing, the panel decides that the domain name registered by the respondent is confusingly similar to the corresponding trademarks of the first and second complainants and identical to the trade name of the third complainant, that the respondent has no rights or legitimate interests in respect of this domain name and that the domain name in issue has been registered and is being used in bad faith by the respondent.

Accordingly, and as the three complainants request in their complaint, the Panel requires that the registration of the domain name <framatome-siemens.com> be transferred to Framatome ANP.

 

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François Dessemontet
Sole Panelist

Date: January 31, 2002