The Complainant is Siemens AG, Germany, represented by Müller Fottner Steinecke Rechtsanwälte PartmbB, Germany.
The Respondent is WhoisGuard, Inc., Panama / Scott A. Davis, Unites States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint1 was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 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 June 8, 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 on June 9, 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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. Due to an apparent issue with the notification, the Center indicated to the Respondent on July 3, 2020 that the Response due date was July 5, 2020, and if the Respondent would like to participate to the proceeding, it should indicate so to the Center. The Respondent did not reply to the Center’s email of July 3, 2020 nor did the Respondent submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020. The Center appointed Knud Wallberg as the sole panelist in this matter on July 13, 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 is one of the world’s largest electrical engineering and electronic companies, which provides its services in 190 countries. The Complainant owns numerous trademarks consisting the term SIEMENS, such as the International Trademark Registration No. 637074, registered on March 31, 1995 under classes 1, 3, 5 to 12, 14, 16, 17, 20, 21, 28, 35 to 38, 40 to 42 and whose scope of protection notably extends to the Unites States of America. The Complainant also owns trademarks consisting the term HEALTHINEERS, such as the International Trademark Registration No. 1320512, registered on March 10, 2016 under classes 1, 5, 9, 10, 16, 25, 35 to 38, 41, 42 and 44 and whose scope of protection notably extends to the Unites States of America: In addition, the Complainant owns European Union Trademark Registration No. 015400849 of the figurative mark SIEMENS HEALTHINEERS. The mark was registered on November 21, 2018 and covers goods and services in international classes 1, 5, 7, 9, 10, 16, 25, 35, 36, 37, 38, 41, 42 and 44. By virtue of long and extensive use, the trademark SIEMENS is a famous trademark that enjoys an excellent reputation on a worldwide basis. The Respondent registered the disputed domain name The Complainant asserts that the disputed domain name The Complainant further asserts that 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, HEALTHINEERS or SIEMENS HEALTHINEERS. Since the disputed domain name leads to a page providing links to several websites of different suppliers, including to the Complainant’s products/services (“Siemens Haushaltsgeräte”; “Siemens Bedienungsanleitung”) and in view of the long extensive use of the mark SIEMENS throughout the world prior to the registration of the disputed domain name The Complainant finally asserts, that the disputed domain name was registered and is being used in bad faith. By deliberately registering the disputed domain name, which contains the Complainant’s famous trademark SIEMENS and a slight variation of the Complainant’s combined trademark SIEMENS HEALTHINEERS, the Respondent intended to use the strong reputation throughout the world of these trademarks in order to confuse the public and to cause damage to the Complainant by disrupting its business. The bad faith use of the disputed domain name is further demonstrated by the email correspondence that uses the disputed domain name in connection with the name of employees of the Complainant, which has been used by the Respondent to contact at least one business partner of the Complainant to request payment of invoices claimed to be outstanding. It is thus obvious that the disputed domain name was used to confuse and betray the public and to disrupt the Complainant’s business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the 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 domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the Complainant’s registered trademark SIEMENS in its entirety as well as the component “healthiner”, which is confusingly similar to the Complainant’s registered HEALTHINEERS trademark. The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in the section 6.C) does not support a finding of rights or legitimate interests. Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the holder 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 holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademark SIEMENS, as well as the distinctive nature of the Complainant’s combined SIEMENS HEALTHINEERS mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name he chose could attract Internet users in a manner that is likely to create confusion for such users. The Panel therefore finds that the disputed domain name was registered in bad faith. Also, the Respondent has used the disputed domain name actively for a PPC page that contained links to websites of third parties some of which appear to offer products of the Complainant or of competitors of the Complainant. It is thus obvious to the Panel that the Respondent has used the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The fact that the use of the disputed domain name was altered after the filing of the Complaint does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” In addition to this, the Complainant has evidenced that the disputed domain name has been used to send emails that purported to be from the Complainant to at least one of the Complainant’s customers, in which the customer was requested to pay outstanding invoices. Such use clearly evidences that the Respondent has been using the disputed domain name for a phishing scheme to deceive customers of the Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This constitutes bad faith use under the Policy (see section 3.1.4 of the WIPO Overview 3.0). Noting that the disputed domain name incorporates a well-known trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision 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 Knud Wallberg 1 The Complaint was filed involving the disputed domain name and the domain name
Sole Panelist
Date: August 4, 2020
Full & Egal Universal Law Academy