Siemens AG v. Christina Duncan / GIS
Claim Number: FA2006001898790
Complainant is Siemens AG (“Complainant”), represented by Julius E Stobbs of Stobbs IP, United Kingdom. Respondent is Christina Duncan / GIS (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <siemensenergy.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2020; the Forum received payment on June 3, 2020.
On June 4, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <siemensenergy.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@siemensenergy.us. Also on June 4, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Siemens AG, 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. Complainant has rights in the trademark SIEMENS based upon its registration of the mark with the World Intellectual Property Organization (“WIPO”), the United States Patent and Trademark Office (“USPTO”) and other government trademark offices around the world dating back to 1995. Respondent’s <siemensenergy.us> domain name, registered on December 1, 2016, is confusingly similar to Complainant’s SIEMENS mark because it wholly incorporates Complainant’s mark and merely adds the descriptive term “energy”.
Respondent does not have rights or legitimate interests in the <siemensenergy.us> domain name. Respondent is not licensed or authorized to use Complainant’s SIEMENS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent does not have an active webpage at the disputed domain.
Respondent registered and uses the <siemensenergy.us> domain name in bad faith. Respondent has engaged in a pattern of bad faith domain name registration. Additionally, Respondent fails to make active use of the domain name. Finally, Respondent registered the disputed domain name with actual and constructive knowledge of Complainant’s rights in the SIEMENS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the SIEMENS mark based upon its registration of the mark with the WIPO, the USPTO, and many other government trademark offices around the world. Registration of a mark with such authorities is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides copies of its USPTO registration certificates and a printout from the WIPO website evidencing that registration. The remainder of Complainant’s claimed registrations are merely provided in a textual list that was generated by Complainant (or its counsel) but with no supporting evidence from the respective trademark offices. In light of the documents presented for the USPTO and the WIPO, the Panel finds sufficient evidence that Complainant has rights in the SIEMENS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <siemensenergy.us> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s SIEMENS mark, only adding the descriptive term “energy.” Addition of this word does not create a sufficiently distinct impression from Complainant’s mark under the threshold standard of Policy ¶ 4(a)(i). Tarte, Inc. v. Protection of Private Person / Privacy Protection, FA 1767340 (Forum Mar. 13, 2018) (“Confusing similarity is typically argued through a showing of a domain name’s inclusion of a mark, and of the comparison between the claimed mark and the disputed domain name; though only a low threshold of proof is required.”) Further, while not argued by Complainant, the Panel notes that the disputed domain name also incorporates the “.us” country-code top-level domain ("ccTLD"). The addition of a descriptive term and a ccTLD to a mark typically does not negate any confusing similarity between a disputed domain name and mark per ¶ 4(a)(i). See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding “The ccTLD ‘.us’ designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that the disputed domain name is confusingly similar to the SIEMENS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <siemensenergy.us> domain name because Respondent is not licensed or authorized to use Complainant’s SIEMENS mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the Registrant as “Christina Duncan” and no information in the record suggests that Respondent is known otherwise or that Complainant has authorized Respondent to use the SIEMENS mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(iii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services and does not make a legitimate noncommercial or fair use thereof as Respondent does not host an active website. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) or (iv). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive or “passive” holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)”). Here, Complainant has provided a screenshot of the error message resolving from the disputed domain name and has thus met its burden of proof. Respondent, however, has filed no response or made any other submission and so has not supported the burden of proof which has now been shifted onto its shoulders. Thus, the Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the SIEMENS mark when registering the <siemensenergy.us> domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be shown by use of a confusingly similar domain name to pass oneself off as a complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights as the SIEMENS mark has developed “considerable reputation and goodwill” and “achieved a high level of recognition”. Further, it points out that Respondent has used the mark in its entirety and has also registered at least one other domain name containing Complainant’s mark (<siemensenergy.co> which was the subject of another dispute proceeding). In support, Complainant provides screenshots of its own website showing the commercial and geographic scope of its trademark use, the background of its company, and an industry award that it has won. The Respondent has not participated in this case and so does not contest Complainant’s assertion or its evidence. In light of the evidence presented, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s trademark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent is passively holding the <siemensenergy.us> domain name in bad faith. Failure to make an active use of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA 1532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name”). As noted previously, Complainant provides screenshots of the inactive website error message to which the disputed domain name resolves and Respondent has not rebutted this evidence. Therefore, the Panel finds bad faith registration and use of the disputed domain name per Policy ¶ 4(a)(iii) on the grounds of non-use and passive holding.
Lastly, Complainant argues that Respondent registered and uses the <siemensenergy.us> domain name in bad faith based upon Respondent’s pattern of such bad faith domain name registration. The registration of multiple domain names that infringe on famous marks and websites may be evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Here, Complainant argues that Respondent also registered the domain name <siemensenergy.co> which has been the subject of a prior dispute proceeding. Siemens AG v. Domains by Proxy, LLC / Christina Duncan, GIS, DCO2020-0007 (WIPO Mar. 27, 2020) (“The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy” and “orders that the Domain Name <siemensenergy.co> be transferred to the Complainant.”) In light of this evidence the Panel finds that Respondent has engaged in a pattern of bad faith domain name registration per Policy ¶ 4(b)(ii) which further supports a finding of bad faith registration and use in the present case.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <siemensenergy.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 29, 2020
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