Complainant is Siemens AG, Germany, represented by Stobbs IP Limited, United Kingdom.
Respondent is Vinay Singh, India.
The disputed domain name <siemenssurgical.com> (the “Domain Name”) is registered with Dreamscape Networks International Pte Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 24, 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 December 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2021.
On January 10 and 11, 2021, the Center received two email communications from Respondent offering the Domain Name to Complainant and stating that the associated webpage is down. On January 11, 2021, the Center received Complainant’s request to suspend the proceedings for settlement discussions. Accordingly, the case at hand was suspended until February 11, 2021. On February 10, 2021, the Center received Complainant’s request to reinstitute the proceedings. Accordingly, the proceedings were reinstituted on February 15, 2021.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 19, 2021. 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.
Complainant Siemens AG (“Siemens”) is one of the world’s largest producers of energy efficient technologies, and a leading supplier of systems for power generation, transmission, and medical diagnosis. In 2019, Complainant generated a revenue of EUR86.8 billion, and accounted for over 380,000 employees worldwide. Siemens Healthineers AG is the parent company for several medical technology companies.
Siemens Healthcare Private Limited is an official partner of Siemens Healthineers AG, based in India.
Complainant owns many trademark registrations for the SIEMENS Mark (or the “Mark”) worldwide including in India (Registration No. 55147, registered August 16, 1956), where Respondent is associated. Complainant is also the registered owner of a portfolio of domain names containing the SIEMENS Mark, including, but not limited to <siemens.com> and <siemens-healthineers.com>. Notably, Complainant has owned the latter domain name since March 15, 2016, and hosts a website dedicated to Complainant’s work within the surgical sector – which is one of Complainant’s clinical specialties.
Respondent registered the Domain Name on April 21, 2020, and it resolved at some point in time to an active website stating to specialize in “disposable heath and protective gloves items, household and industrial products”. Currently the website is inactive.
Complainant has built considerable reputation and goodwill in the SIEMENS Mark through its extensive use in relation to a broad range of products and services, including those within the medical sector and has secured multiple awards to that effect.
Complainant has extensive rights in the SIEMENS Mark worldwide, including India. The Domain Name is confusingly similar to the Mark in that it wholly incorporates the Mark, along with the descriptive word “surgical’, which does nothing to materially alter the overall impression of the Domain Name. Adding that term reinforces an association with Complainant, as any use of the Mark in the content of medical services would be associated with Complainant. An internet search performed for “Siemens Surgical” immediately brings up content relating to Complainant. The Top-Level Domain (“TLD”) suffix “.com’”should be disregarded in assessing the Domain Name as it is merely a technical requirement, used for domain name registrations.
Respondent has not been known by the name SIEMENS at any point in time. That fact (along with fraudulent activity set forth below), leads Complainant to conclude that the only reason why Respondent registered the Domain Name was to take advantage of Complainant’s goodwill and valuable reputation with the sole aim of financial gain.
Complainant contacted the Registrar on April 28, 2020, putting them on notice of the infringement and requesting that they suspend the Domain Name and or its content. It received confirmation on May 25, 2020 that the Registrar had contacted Respondent. There is no plausible justification for Respondent not being aware of Complainant’s rights in the Domain Name. From the date the Domain Name was registered on April 21, 2020 until May 25, 2020 the Domain Name was associated with a live website having infringing content, which the Registrar removed. That content fraudulently posed as Siemens Healthcare Private Limited, based in India. Respondent’s website also referred to “Siemens Surgical Ukraine”, as part of the contact details provided, which is a fictitious entity completely unconnected to Complainant’s network of companies and official partners. The website purported to be an “online surgical supplier” and claimed to specialize in “disposable heath and protective gloves items, household and industrial products”. It featured a “Shop” option as well as the option for internet users to create an account and further listed an email address for internet users to contact: [...]@siemenssurgical.com. Respondent registered the Domain Name to engage in fraudulent activity, and to gain from it, by attempting to impersonate official business entities of Complainant. Not only did the Domain Name host a website which purported to offer products and services unauthorized by Complainant, it also facilitated the gathering of personal information from internet users, who would have been likely to engage with the website and the products offered (such as surgical masks, hand sanitizers and thermometers), in the midst of the Covid-19 pandemic. Even after the suspension of Respondent’s website knowingly retained the Domain Name.
Respondent knew of Complainant’s rights in the Mark and he registered the Domain Name knowing of Complainant and the Mark. The Mark significantly pre-dates registration of the Domain Name. Furthermore, Complainant has received widespread recognition, supported by the global outreach of its official websites and other related online presence, including its various awards and accolades. Respondent registered the Domain Name with the sole purpose of creating an association with Complainant, which is further reinforced by the fact that his website made reference to, and claimed to be operated by, Complainant’s Indian subsidiary, Siemens Healthcare Private Limited. In view of the worldwide recognition of Complainant’s brand and the scope of the Complainant’s business, there is no plausible reason that Respondent could have for registering the Domain Name. Complainant further notes that the email address listed by Respondent as part of the Domain Name’s registrant details has been publicly blacklisted by a “scam alert” database, and the registrant telephone number was also reported by internet users as being linked to other fraudulent domain names.
Respondent did not reply to Complainant’s contentions.
The Panel finds Complainant has established rights in the SIEMENS Mark based on the aforementioned trademark registration for the Mark that Complainant made of record.
The Panel further finds that the Domain Name <siemenssurgical.com> is confusingly similar to Complainant’s SIEMENS Mark. The relevant comparison to be made is with the second-level portion of the Domain Name (i.e., “siemenssurgical”). The Domain Name wholly incorporates the SIEMENS Mark, adding the word “surgical”. Including the SIEMENS Mark in the Domain Name in its entirety is enough to render the Domain Name confusingly similar to the SIEMENS Mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. Furthermore, combining the SIEMENS Mark with an additional term does not prevent a finding of confusingly similarity. In this case, using the particular term “surgical” with the SIEMENS Mark in the context of the fraudulent scheme described below supports the Panel’s findings under the second and third elements as it increases the likelihood of confusion. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, adding the gTLD such as “.com” does not distinguish the Domain Name from the Mark because the use of a gTLD is required of domain name registrations. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark for any purpose including to register the Domain Name. Furthermore, Respondent has not been known by the name SIEMENS. Complainant further describes Respondent’s involvement in a scheme to defraud internet users by posting content on the website associated with the Domain Name in a manner to pose as Siemens Healthcare Private Limited, based in India. Respondent’s website also referred to “Siemens Surgical Ukraine”, in the contact details on the website, which is a fictitious entity completely unconnected to Complainant’s network of companies and official partners. The website purported to be an “online surgical supplier” and claimed to specialize in “disposable heath and protective gloves items, household and industrial products”. It featured a “Shop” option as well as the option for internet users to create an account and further listed an e-mail address for internet users to contact: [...]@siemenssurgical.com. Not only did the Domain Name host a website which purported to offer products and services unauthorized by Complainant, it also facilitated the gathering of personal information from internet users, who would have been likely to engage with the website and the products offered (such as surgical masks, hand sanitizers and thermometers), in the midst of the Covid-19 pandemic.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Respondent registered and has been using a domain name that, as the Panel found above, is confusingly similar to the SIEMENS Mark. When Respondent registered the Domain Name, Complainant had been using its SIEMENS Mark for many years worldwide, including India. By registering the Domain Name <siemenssurgical> and using the email address “[...]@siemenssurgical.com”, both of which use the SIEMENS Mark, along with a website that is posing as one of Complainant’s official partners, to fraudulently misrepresent a connection with Complainant in purporting to provide medical and surgical related products (e.g., digital thermometer, medical gloves, surgical mask), this is clear evidence that Respondent registered the Domain Name with knowledge of Complainant and its rights in the SIEMENS Mark, and with a clear purpose.
Also, Respondent’s use of the Domain Name constitutes bad faith use because Respondent is using a confusingly similar Domain Name along with a similar email address on a website misrepresenting itself as Complainant -- selling medical supplies like Complainant, for Respondent’s commercial gain and possibly to scam the public into providing their confidential information. Although the Domain Name no longer resolves to an active website and Respondent has represented that it is down, there is no evidence Respondent ever contemplated a good faith use of the Domain Name and he could use it again in the future for illegal purposes. Respondent’s registration and use of the Domain Name under the fraudulent circumstances set forth above constitute bad faith registration and use of the Domain Name. See BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <siemenssurgical.com> be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: February 21, 2021