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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Siemens AG v. James Golden

Case No. D2020-1797

1. The Parties

Complainant is Siemens AG, Germany, represented by Müller Fottner Steinecke Rechtsanwälte PartmbB, Germany.

Respondent is James Golden, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <siemens-healthineers-us.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on July 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2020. The Center received two informal email communications from the Respondent on July 14, 2020. Respondent did not submit any response. Accordingly, the Center notified the commencement of Panel Appointment on August 5, 2020. After the Center’s communication on August 5, 2020, the Center received another email from the Respondent, stating “screw u siemens”.

The Center appointed Roberto Bianchi as the sole panelist in this matter on August 11, 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

Complainant, founded over 150 years ago and with headquarters in Berlin and Munich, is a well-known provider of technological goods and services in 190 countries

Complainant owns, inter alia, the following trademark registrations:

International Trademark SIEMENS, Registration No. 637074, Registration Date March 31, 1995, covering goods and services in 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, designating numerous countries, including the United States.

International Trademark SIEMENS HEALTHINEERS, Registration No. 1357232, registered on October 25, 2016, covering goods and services in international classes 5, 9, 10, 35, 37, 42 and 44, designating several countries, inter alia, the United States.

In addition, Siemens Healthcare GmbH, a company belonging to the Siemens Group and related to Complainant, owns International Trademark HEALTHINEERS, Registration No. 1320512, registered on March 10, 2016, covering goods and services in classes 1, 5, 9, 10, 16, 25, 35, 36, 37, 38, 41, 42 and 44, designating numerous countries, inter alia the United States.

Complainant also owns the <siemens-healthineers.com> and <siemens-healthineer.com> domain names, both registered on March 15, 2016.

The disputed domain name was registered on June 8, 2020.

At the time of rendering the Decision, the disputed domain name redirects to the “www.siemens-healthineers.com” website. Alternatively, the Panel’s browser showed a “403 error” and a message stating, “Forbidden Access to this resource on the server is denied!” The Complaint provided evidence that the disputed domain name redirected to the “www.siemens-healthineers.com” website.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical or confusingly similar to Complainant’s mark SIEMENS, one of the best known trademarks in the world today. The generic Top-Level Domain (“gTLD”) “.com” should be disregarded under the confusingly similarity test as a standard registration requirement. Due to the high reputation of the trademarks SIEMENS, the public will automatically recognize these marks and will associate the disputed domain name with Complainant. Internet users will think that the disputed domain name belongs to Complainant, which is providing services under the marks SIEMENS in the United States. This is especially so as Complainant owns the <siemens-healthineers.com> and <siemens-healthineer.com> domain names, which are almost identical to the disputed domain name.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not and has never been one of Complainant’s representatives, employees, or licensees or is otherwise authorized to use the trademarks SIEMENS or HEALTHINEERS. Complainant does not have any connection with Respondent. When Internet users connect their browsers to the “www.siemens-healthineers-us.com” website, they are automatically redirected to Complainant’s website “www.siemens-healthineers.com” as shown in Annex 8.

In view of this redirection and the long and extensive use of the mark SIEMENS throughout the world since decades prior to the registration of the disputed domain name, it is obvious that Respondent is well aware of this mark. The status of reputation has been assessed by UDRP panels in Siemens AG v. Dorofeev, Konstantin, WIPO Case No. D2013-0923, Siemens AG v. Mr. Ozgul Fatih, WIPO Case No. D2010-1771 and Nokia Corporation, Siemens AG, Nokia Siemens Networks Oy v. Chen Fang Fang, WIPO Case No. D2008-1908.Therefore, Respondent cannot make any legitimate noncommercialor fair use of the disputed domain name other than obstructing Complainant anddisrupting its business. For these reasons, Respondent has no rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in bad faith as Respondent knew or should have known about Complainant’s earlier rights in the trademarks SIEMENS. The disputed domain name identically contains the famous trademarks SIEMENS and the “healthineers” term of Complainant’s SIEMENS HEALTHINEERS trademark. Respondent intended to use the strong reputation of these trademarks in order to confuse the public and to cause damage to Complainant by disrupting its business. Since Respondent has been redirecting the disputed domain name to Complainant’s official websites, Complainant must assume that Respondent registered the disputed domain name with the purpose to use it as his corresponding email address to send fraudulent emails to Complainant’s customers to direct them to Respondent’s own medical supplies business. This assumption is based on the fact that Respondent’s email address per the relevant WhoIs database is “bulkmedicalsupplies@[...]”. Complainant faced this pattern of registering an identical domain to use it as an email address in the past in relation to other domain names containing the famous trademark SIEMENS. Therefore, it is evident that the domain name was registered because of its similarity to the Complainant’s trademarks SIEMENS and with the intention of taking predatory advantage of the goodwill of Complainant in order to divert Internet traffic intended for Complainant. Complainant already owns and uses for business purposes various domain names consisting of the sign SIEMENS, such as <siemens.com>, <siemens.eu>, <siemens.de>, <siemenshealthineers.com>, <siemens-healthineer.com>. Therefore, it was very conceivable for the Respondent that the disputed domain name would be of relevance for Complainant to offer their products in the United States under a United States related domain name.

Since the disputed domain name contains the well-known trademark SIEMENS, any unauthorized use of the disputed domain name may result in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions. However, the Center received two informal email communications on July 14, 2020, stating: “Dont u have anything else to do Go fuck urself n goodluck” and “Screw u n ur name take me to court Good luck w that as i stated in previous email”. On August 5, 2020, after the Center informed the Parties that it would proceed to Panel appointment, the Center received another email from the Respondent, stating “screw u siemens”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that Complainant has rights in the SIEMENS and SIEMENS HEALTHINEERS marks. See section 4 above.

The Panel notes that the disputed domain name incorporates Complainant’s SIEMENS and the SIEMENS HEALTHINEERS trademarks in their entirety, only adding the geographical term “us”, two hyphens and the “.com” gTLD. It is well established that such kind of additions would not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the marks SIEMENS and SIEMENS HEALTHINEERS, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends that Respondent was never authorized to use the SIEMENS or SIEMENS HEALTHINEERS trademarks, and that Complainant does not have any connection with Respondent. Respondent is redirecting Internet users connecting to the website at the disputed domain name to Complainant’s website “www.siemens-healthineers.com”. Complainant adds that in view of this redirection and the long and extensive use of the mark SIEMENS throughout the world, Respondent is well aware of Complainant’s well-known mark SIEMENS. Therefore, Respondent cannot make any legitimate noncommercialor fair use of the disputed domain name.

The Panel notes that according to the relevant WhoIs data, the registrant of the disputed domain name. i.e. Respondent, is “James Golden”, and there is no evidence showing that Respondent is known by the disputed domain name. This makes Policy paragraph 4(c)(ii) inapplicable. As to the use of the disputed domain name, Complainant has shown that Internet users presumably looking for Complainant simply were being redirected to Complainant’s website “www.siemens-healthineers.com”. Alternatively, access to the website at the domain name simply is being denied. In the view of the Panel, in absence of any authorization by Complainant, or any explanation whatsoever by Respondent, this parasitic use of the disputed domain name is neither a bona fide use pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c )(iii).

Thus, Complainant succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide any explanation for his reasons to register and use the disputed domain name as shown. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel also notes that the SIEMENS trademark was registered decades before the registration of the disputed domain name, and that the registration of the SIEMENS HEALTHINNERS trademark also predates the registration of the disputed domain name by several years. See section 4 above. Moreover, the Panel agrees with previous UDRP panels that the SIEMENS trademark is well-known and famous worldwide. See Nokia Corporation, Siemens AG, Nokia Siemens Networks Oy v. Chen Fang Fang, supra “[...] the trademarks NOKIA and SIEMENS are well-known in many countries, including in China”). See also Siemens AG v. Mr. Ozgul Fatih, supra (“Given the international reputation of the SIEMENS mark (…), the Panel finds that in all likelihood the Respondent knew or should have known the Complainant’s SIEMENS trademark at the time he registered the disputed domain name […]”. See also Siemens AG v. Jean Niemann, WIPO Case No. D2009-0214 (“Based on the long standing reputation and widespread presence of the Complainant, the Panel is satisfied […] that Respondent must have been aware of the Complainant's SIEMENS mark prior to registering the domain name […]”) Lastly, the only use of the disputed domain name appears to have been its redirection to Complainant’s official website “www.siemenshealthineers.com”.

These facts and circumstances demonstrate that at the time of registering the disputed domain name, Respondent very well knew of, and targeted Complainant and its SIEMENS and SIEMENS HEALTHINEERS marks.

The available evidence shows that Respondent used the disputed domain name to redirect Internet users to Complainant’s official website, presumably with the purpose of obtaining these users’ email addresses to send them fraudulent emails and direct them to his own medical supplies business. Respondent, by using the disputed domain name as described, has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website or location. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith of the disputed domain name.

Lastly, the Panel notes that Respondent failed to submit any explanation in its own favor.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <siemens-healthineers-us.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: August 26, 2020

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