Decision for dispute CAC-UDRP-107336

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant is the owner of the International trademark SIEMENS with registration No. 637074, registered on 31 March 1995 for goods and services in International 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 (the “SIEMENS trademark”).

The Complainant is a subsidiary of Siemens Aktiengesellschaft, which is the ultimate mother company of the Siemens Group, which is one of the world’s largest corporations, active in the fields of Medicine, Automation and Control, Power, Transportation, Logistics, Information and Communications, etc. The turnover of the Siemens Group for 2024 was EUR 75.9 billion, and the group employs more than 325 000 people worldwide. 

The Complainant owns the domain names <siemens.com>, <siemens.eu>, <siemens.de>, and <siemens-healthineers.com>.

The disputed domain name <negoziosiemens.com> was registered on 12 January 2025, and the disputed domain name <negozio-siemens.com> was registered on 17 February 2025. They are currently inactive. At the time of filing of the Complaint, they resolved to identical websites displaying the header "Siemens Healthineers" and offering various healthcare-related products.

COMPLAINANT

The Complainant submits that the disputed domain names are confusingly similar to the SIEMENS trademark, because they incorporate it in combination with the Italian dictionary word “negozio” which means “shop” in English. According to the Complainant, Internet users will think that the disputed domain names and the associated websites belong to the Complainant.

The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names, because they have never been representatives or licensees of the Complainant and are not using the disputed domain names in connection with a bona fide offering of goods or services.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. According to it, the content of the websites at the disputed domain names shows that the Respondents are well aware of the SIEMENS trademark and have registered the disputed domain names with an intent to usurp the strong global reputation of this trademark in order to confuse the public for commercial gain and cause damage to the Complainant. The Complainant points out that the Respondents engage in fraud and trademark infringement by reproducing within the websites at the disputed domain names the SIEMENS trademark, key visuals and branding design of the Complainant and its affiliate company Siemens Healthineers, and by further impersonating Siemens Healthineers with the use of text entries in Italian such as “We are pioneers in the health sector. For everyone. Anywhere. In a sustainable wait” (translated from Italian). According to the Complainant, the Respondents attempt to confuse Italian consumers into believing that the websites at the disputed domain names are legitimate Siemens Healthineers websites for the Italian market and that the products offered for sale on these websites are legitimate products of the Complainant.

RESPONDENTS:

The Respondents did not submit a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to the SIEMENS trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondents to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Procedural issue – Consolidation of multiple Respondents

The amended Complaint was filed in relation to two nominally different domain name registrants. The Complainant requests the consolidation of the Complaint against them pursuant to paragraph 10(e) of the Rules. According to it, the two disputed domain names are under common control, even though their registrants have different names and contact details, because the only difference between the disputed domain names is the addition of a hyphen between “negozio” and “siemens” in the disputed domain name <negozio-siemens.com>, and the websites at the disputed domain names have identical content and layout. The Complainant adds that the disputed domain name <negozio-siemens.com> was registered immediately after the Complainant took down the website at the other disputed domain name <negoziosiemens.com> through a takedown request, which indicates that the same entity registered the disputed domain name <negozio-siemens.com> in order to overcome the takedown of the website at the other disputed domain name.

The registrants of the two disputed domain names did not submit any comments or objections to the Complainant’s consolidation request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether the disputed domain names are subject to common control, and whether the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the two disputed domain names share the elements “negozio” and “siemens”, which makes them very similar to each other and to the distinctive SIEMENS trademark. The evidence also shows that the websites at the two disputed domain names are identical. In the absence of any allegation or evidence pointing to a different conclusion, the above supports a finding that the two disputed domain names are under common control.

As regards fairness and equity, none of the Parties has expressed any concerns, and the Panel sees no reason why the consolidation of the disputes would be unfair or inequitable to any of them.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants in a single proceeding.

Having resolved the above procedural issue, the Panel is satisfied that all procedural requirements under the UDRP were met and there is no reason why it would be inappropriate to provide a decision.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the 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 domain name; and

(iii) the domain name was registered and is being used in bad faith.

In this case, the Provider has employed the required measures to achieve actual notice of the Complaint to the Respondents, and the Respondents were given a fair opportunity to present their cases.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondents have not used the opportunity provided to them under the Rules and have not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it.

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights to the SIEMENS trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD sections of the disputed domain names.

The disputed domain names reproduce the SIEMENS trademark entirely in combination with the Italian dictionary word “negozio” (“shop” in English), and the SIEMENS trademark is easily recognizable in the disputed domain names. As discussed in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within a 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. The nature of such an additional term may however bear on the assessment of the second and third elements.

Taking all the above into account, the Panel finds that the disputed domain names are confusingly similar to the SIEMENS trademark in which the Complainant has rights.

Rights and legitimate interests

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 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 Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, because they have not been authorized to use the SIEMENS trademark and have no relationship with the Complainant. According to the Complainant, the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services, but attempt to confuse Italian consumers into believing that the associated websites are legitimate Siemens Healthineers websites for the Italian market and that the products offered for sale on these websites are legitimate products of the Complainant. Thus, the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.

The Respondents have not submitted a Response and have not provided any plausible explanation as to why they have registered the disputed domain names and how they intend to use them.

 In the Panel’s view, the circumstances of this case support a finding that the Respondents have no rights and legitimate interests in the disputed domain names. They represent a combination of the distinctive SIEMENS trademark with the Italian word for “shop”, and this may create a false impression in Italian-speaking Internet users that they represent official online shops offering the Complainant’s products for the Italian market. The associated websites strengthened this false impression by displaying the header "Siemens Healthineers", offering various healthcare-related products and copying content from the official website of the Complainant without including any disclaimer for the lack of relationship with the Complainant.

In the lack of any arguments or evidence to the contrary, the above leads the Panel to the conclusion that the Respondents, being well aware of the goodwill of the Complainant’s SIEMENS trademark, have registered and used the disputed domain names targeting this trademark in an attempt to exploit its goodwill by confusing Internet users that the associated websites and the products offered for sale there originate from or are endorsed by the Complainant. The Panel does not regard such activities as giving rise to rights or legitimate interests in the disputed domain names.

Therefore, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain names.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 registration of the distinctive SIEMENS trademark predates by 30 years the registration of the disputed domain names. They represent combinations of the same trademark with the Italian word for “shop”, so Italian-speaking Internet users may associate them with the Complainant. The associated websites have copied image and text content from the Complainant’s official website and displayed the header "Siemens Healthineers", which shows that the Respondents are well aware of the Complainant and its SIEMENS trademark. These websites have offered for sale various healthcare-related products that are similar to products offered by the Complainant without displaying any disclaimer for the lack of relationship with the Complainant. The Respondents have not provided any plausible explanation of their choice of the disputed domain names and of their plans  on how to use them.

Considering all the above, the Panel finds that by registering and using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the associated websites, by creating a likelihood of confusion with the Complainant’s SIEMENS trademark as to the affiliation or endorsement of these websites and of the products offered there. This supports a finding that the disputed domain names have been registered and are being used in bad faith.