The Complainants are Siemens AG and Siemens Trademark GmbH & Co. KG, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Wire Lord, United States of America (“United States”).
The disputed domain name <siemens-healthineeers.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, 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.
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 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2020.
The Center appointed Zoltán Takács as the sole panelist in this matter on November 18, 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.
The Complainant Siemens AG, founded more than 150 years ago is one of the world’s largest companies providing innovative technologies and comprehensive know-how in 190 countries.
The Complainant Siemens Trademark GmbH & Co. KG is the trademark holding company of Siemens AG and its extensive portfolio of trademarks include the International Trademark Registration (“IR”) No. 1357232 SIEMENS HEALTHINEERS and design registered on October 25, 2016 for goods and services of classes 5, 9, 10, 35, 37, 42 and 44 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks.
The SIEMENS HEALTHINEERS trademark is associated with the Complainants and their affiliated company Siemens Healthcare GmbH, a provider of medical services and solutions.
The disputed domain name was registered on October 1, 2020 and has not resolved to an active website since registration.
The Complainants contend that the disputed domain name is confusingly similar to the SIEMENS HEALTHINEERS trademark. It contains the well-known SIEMENS mark in its entirety, while addition of the “healthineers” element (using additional vowel “e”) makes it a typical case of typosquatting.
The Complainants further allege that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainants claim that the Respondent certainly knew of the SIEMENS HEALTHINEERS trademark at the time of obtaining the disputed domain name and has registered it in order to take advantage of its goodwill.
The Complainants request that the disputed domain name be transferred from the Respondent to the Complainant Siemens AG.
The Respondent did not reply to the Complainant’s contentions.
The first procedural issue is whether the Complainants are entitled to file one complaint against a single respondent.
While neither the Policy nor the Rules expressly provides for the consolidation of multiple complainants in a single complaint, paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes.
According to section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent panels should determine whether the complainants have a specific common grievance against the respondent and whether it would equitable and procedurally efficient to permit the consolidation.
The Respondent’s registration and holding of the disputed domain name affects both Complainants (Siemens AG being the mother company and Siemens Trademark GmbH & Co. KG its trademark holding company) trademark rights. The Complainants should therefore be allowed to challenge such disputed domain name in an efficient and cost effective manner as possible and the Panel permits consolidation of the Complainants. The Panel finds that the Complainants have a specific common grievance against the Respondent and it is equitable and procedurally efficient to permit the consolidation.
Paragraph 11 of the Rules directs that in absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
The language of the Registration Agreement for the disputed domain name is English which the Panel establishes as the language of this administrative proceeding.
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview 3.0.
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(i) of the Policy, there are two requirements which the complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainants produced proper evidence of having registered rights in the SIEMENS HEALTHINEERS trademark and for the purpose of this proceeding the Panel establishes that the IR No. 1357232 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainants trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the SIEMENS HEALTHINEERS trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.9 of the WIPO Overview 3.0., a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The SIEMENS HEALTHINEERS trademark is clearly recognizable within the disputed domain name. Furthermore, the disputed domain name adds an extra letter “e” to the SIEMENS HEALTHINEERS trademark, which in the view of the Panel is clear case of typosquatting.
Accordingly, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainants have submitted sufficient and uncontested evidence of holding well-established rights in the SIEMENS HEALTHINEERS trademark.
The Complainants have never authorized the Respondent to use the SIEMENS HEALTHINEERS trademark in any way, and their prior rights in the SIEMENS HEALTHINEERS trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainants’ prima facie case. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation (see section 2.5.1 of the Overview 3.0).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The disputed domain name has not resolved to an active website since registration. There is no evidence that the disputed domain name has been used in any active way.
According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence or actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Respondent’s reproduction of the inherently distinctive SIEMENS HEALTHINEERS trademark in the disputed domain name convinces the Panel that the Respondent was aware of the Complainants’ business and prior rights at the time of obtaining the disputed domain name and chose to register it in order to exploit the reputation behind the SIEMENS HEALTHINEERS trademark without any authorization or rights to do so.
The Respondent’s lack of any rights or legitimate interests in the disputed domain name, absence of any conceivable good faith use of the disputed domain name by the Respondent, failure to react and respond to the compelling evidence submitted by the Complainants, in view of this Panel further support an undisputed presumption of the Respondent’s evident targeting of the Complainants’ trademark rights and suggest that the Respondent’s non-use of the disputed domain name is in bad faith.
Noting the above discussed facts and circumstances the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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-healthineeers.com> be transferred to the Complainant Siemens AG.
Date: December 2, 2020
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