WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens Aktiengesellschaft v. Ahmed Hassan
Case No. D2016-1119
1. The Parties
Complainant is Siemens Aktiengesellschaft of Munich, Germany, represented by CMS Hasche Sigle, Germany.
Respondent is Ahmed Hassan of North Miami, Florida, United States of America ("United States").
2. The Domain Names and Registrar
The disputed domain names <siemenshealthineer.com> and <siemenshealthineers.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 3, 2016. On June 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 3, 2016, 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 June 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2016. Further to the submission of a first Response and a request from Respondent on June 28, 2016, the Response due date was extended until July 1, 2016 in accordance with the Rules, paragraph 5(b).
The second Response was filed with the Center on July 1, 2016, in which Respondent agreed to cancel the Domain Names. In reaction to it, Complainant replied by email containing comments on Respondent's allegations on July 15, 2016.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on July 22, 2016. 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
According to the Registrar, both Domain Names were registered on December 20, 2015. The Domain Names resolve to webpages indicating that the websites will be coming soon.
Complainant is an electronics company incorporated in Germany, having its principal place of business in Munich, Germany. Complainant owns inter alia international trade mark SIEMENS, registered on March 31, 1995.
5. Parties' Contentions
Complainant states that it was founded in 1847 and is one of the world's largest producers of energy-efficient, resource saving technologies and a leading supplier of systems for power generation and transmission, as well as medical diagnosis. It says it operates in 289 major production and manufacturing plants worldwide, with around 348,000 employees in more than 200 countries, and has a brand-value of approximately USD 8.5 billion.
Complainant further states that it is the owner of several registered trade marks for SIEMENS in various countries, and that due to its longstanding and widespread use, the SIEMENS mark enjoys substantial global reputation. On May 4, 2016, Complainant's healthcare business launched its new name "Siemens Healthineers" which embodies its pioneering spirit and engineering expertise in the healthcare industry.
Complainant contends that the Domain Names incorporate Complainant's trade mark in its entirety, with the first word element "siemens" being identical to the trade mark SIEMENS. The word element "siemens" at the beginning of the Domain Names is the predominant part and the additional word "healthineer" is not sufficient to hinder a finding of confusing similarity.
Complainant points out that Respondent is not, and has never been one of its representatives, employees, or one of its licensees, nor has Complainant authorized Respondent to use the name "Siemens" in the Domain Names. In addition, there is no legitimate interest of Respondent to use the well-known trade mark SIEMENS within a domain name.
Complainant notes that both Domain Names redirect to Respondent's website "www.thehealthineers.com" and claims that Respondent has not used the Domain Names in connection with a bona fide offering of goods and services or any legitimate noncommercial or fair use.
Complainant asserts that given its history and the global appearance of the brand "Siemens", it would be improbable that a person would not be aware of the association of the name "Siemens" with Complainant's business, which would be especially true for a person based in the United States.
Complainant suggests that Respondent has registered the Domain Names in bad faith with a view to attracting Internet users for illegitimate purposes, namely to benefit from the strong reputation of the "Siemens" brand and to disrupt Complainant's business.
Complainant suggests that whilst Respondent's goals listed under the heading "about us" on its website at "www.thehealthineers.com" is to provide a platform of knowledge and understanding on how to prevent chronic diseases, there is no relevant content available on the websites, and this, Complainant claims, creates a false impression of a project "Healthineers" which actually does not exist.
Complainant submits that neither the registration nor the use of the Domain Names can be deemed in good faith.
Respondent asserts that he is the Chief Executive Officer of Healthineers Limited Liability Corporation in the United States ("Healthineers"). Healthineers is said to be the registered trade name of Healthineers, which is a legally established entity and corporation established in the United States and organized under the federal laws of the United States as of July 9, 2015, with two established offices, one in New Jersey and the other in Florida, USA.
Respondent further states that on February 8, 2016 and June 3, 2016 Healthineers filed a trade mark application through the United States Patent and Trademark Office ("USPTO") to protect its brand name and Service Mark, HEALTHINEERS, in the United States.
Respondent asserts that Healthineers' corporate website "www.thehealthineers.com" was established on December 22, 2014 (18 months before the re-branding of Siemens Healthcare into Healthineers on May 4, 2016), and is the active online site of Healthineers, offering an effective learning tool to outline importance of healthy diet and nutrition, vitamins, and supplements to modify behaviors and obtain a healthy lifestyle and improve quality of life of their customers.
Respondent points out that through Healthineers' online store, located at the active website, "www.thehealthineers.com" he sells digital health monitor devices, such devices being innovative health tracker devices, which monitor exercise activity duration of an individual and calories burned. Also sold are digital thermometers, which are an innovative water-resistant design, allowing customers to take their temperatures orally or under the arm, and antibacterial cleansers for hand-washing to decrease bacteria.
Respondent refutes Complainant's allegation that "no relevant content is available on the website," and points out that he offers latest public health news and a healthwatch blog to promote public health awareness leading to health equity and a better quality of life.
Respondent also refutes Complainant's allegation that Respondent has selected the Domain Names solely to attract Internet users for illegitimate purposes, namely to benefit from the strong reputation of the "Siemens" brand and to disrupt Complainant's business and says further that at no stage did either of the Domain Names redirect to any website as claimed.
Respondent claims that by Complainant rebranding and re-naming their healthcare division from "Siemens Healthcare" to "Healthineers" on May 4, 2016, Complainant has engaged in intellectual property infringement of the trade name and trade mark of Healthineers, and Healthineers does not accept nor did it give any express consent to have its brand names (Healthineers and Healthineer) or any part of its title to Complainant.
Respondent goes on to say that since September 2015, and through the use of third-party brokers, Complainant has attempted to acquire assets of Healthineers.
However, notwithstanding the above, in a final submission Respondent consents to the remedy requested by Complainant and agrees to cancel the Domain Names, formally stating: "I, Dr. Ahmed Hassan, consent to the remedy requested by the Complainant and agree to cancel the disputed domains names (SiemensHealthineers.com and SiemensHealthineer.com) as I intend to maintain all my focus and attention on my corporate business….."
C. Complainant's Additional Submission
As this communication has been sent by Complainant in reaction to the second Response, in which Respondent expressed his consent to remedy, the Panel will admit it into the record of this proceeding, according to paragraph 10 of the Rules.
Complainant refutes Respondent's denial that the Domain Names forwarded the visitor to the website "www.thehealthineers.com" and suggests that Respondent had deactivated the forwarding option as a reaction to the pending UDRP proceedings.
Complainant points out that in his evidence Respondent has not provided any reasons for the usage of SIEMENS in the Domain Names. Complainant also denies Respondent's allegation of violation of his intellectual property rights.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established long-standing use and registration of the trade mark SIEMENS ("Complainant's Trade Mark"). It has also since May 4, 2016 used and promoted in the healthcare industry the name "Siemens Healthineers". Forming a dominant part of and therefore central to the name Siemens Healthineers is Complainant's Trade Mark.
Complainant contends that the Domain Names incorporate Complainant's Trade Mark in its entirety, with the first word element "siemens" being identical to Complainant's Trade Mark and that the additional word "healthineer" is not sufficient to hinder a finding of confusing similarity.
There is merit in Complainant's submission. It is amply clear that the Domain Names include Complainant's Trade Mark and that Complainant's Trade Mark is clearly identifiable within the Domain Names. Respondent has had the opportunity to do so but has not explained why he registered two domain names comprising or containing the word "Siemens". As a result, the Panel has no difficulty in finding that the Domain Names are confusingly similar to Complainant's Trade Mark.
It is therefore found that Complainant has rights in Complainant's Trade Mark, that Complainant's Trade Mark comprises a dominant and confusing part of the Domain Names, and that the requirements of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Respondent is not apparently affiliated with Complainant and has not been authorized by Complainant to use and register its trade marks or to seek the registration of any domain name incorporating Complainant's Trade Mark.
The registration and use of Complainant's Trade Mark preceded the registration of the Domain Names. The Domain Names make an obvious and direct reference to Complainant's Trade Mark and goods and services supplied in the healthcare industry and associated with Complainant.
Respondent asserts that he is the Chief Executive Officer of Healthineers LLC and that his company operates a legitimate online store at "www.thehealthineers.com" which sells, inter alia, digital health monitor devices. What Respondent does not explain is why Complainant's Trade Mark has found its way into the Domain Names and why Respondent has a legitimate, or indeed any, interest in the Domain Names, which are confusingly similar to Complainant's Trade Mark and resolve to inactive websites. The Panel accordingly finds that such activity is not consistent with any rights or legitimate interests on Respondent's part.
Finally, Respondent has consented to the remedy requested by Complainant and agreed to cancel the Domain Names. In this Panel's view, it does not obviate the need for the Panel to determine the Complaint on its merits. It does however effectively indicate that Respondent acknowledges that he does not have any rights or legitimate interests in the Domain Names.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and used the Domain Names in bad faith.
It is not difficult, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant's Trade Mark at the time he registered the Domain Names. SIEMENS is a widely known trade mark with a well-established and widespread international reputation.
Regarding bad faith use of the Domain Names, the Panel notes the direction to "coming soon" webpages. As indicated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding of a domain name does not as such prevent a finding of bad faith. Given the notoriety of Complainant's Trade Mark and Respondent's failure to even claim any good faith use of the Domain Names, the Panel accepts Complainant's credible allegations that Respondent selected the Domain Names to disrupt Complainant's business and take advantage of Complainant's mark.
This enables the Panel to conclude that the Domain Names were registered and used in bad faith in accordance with 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 Names <siemenshealthineer.com> and <siemenshealthineers.com> be transferred to Complainant.
Clive L. Elliott QC
Date: August 9, 2016