WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inventio AG v. Lee Lines
Case No. D2012-2230
1. The Parties
The Complainant is Inventio AG of Hergiswil NW, Switzerland.
The Respondent is Lee Lines of Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <schindler-lifts.com> is registered with Webfusion Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2012. On November 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2012.
The Center appointed Ross Wilson as the sole panelist in this matter on January 8, 2013. 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
The Complainant was established in 1933 to administer, hold and licence the intellectual property of the Schindler Group of companies. It is the owner of numerous SCHINDLER trademarks and is a wholly owned subsidiary of Schindler Holding AG. Over the years trademarks used and owned by the Schindler Group have been assigned to the Complainant. The trademarks have been registered in over 150 countries. The earliest was registered in 1927.
The Schindler Group has its origins in 1874 and has grown and developed by investments to become a major supplier of elevators, escalators, moving walkways and related equipment. The Schindler Group has about 44,000 employees in more than 100 countries and operating revenue of CHF 7.8 billion. The Group has been recognised for its innovation in the Forbes magazine’s list of most innovative companies in the world.
Based on the information provided in the Respondent’s responses to the Complainant’s warning letters the Respondent is a company engaged in the field of installing, modernizing and servicing all types of lifts and lift equipment. On October 9, 2011, the Respondent registered the disputed domain name. On October 26, 2011, the Complainant notified the Respondent of its prior rights in the SCHINDLER trademark and demanded the transfer of the disputed domain name to the Complainant. The Respondent replied on November 15, 2011 denying any trademark infringement but offered to sell the disputed domain name to the Complainant if properly compensated. In its correspondence of November 23, 2011 the Complainant offered to pay the Respondent EUR 200 for the transfer. In subsequent emails the Respondent advised the Complainant that it had temporarily removed the forwarding of the disputed domain name to the Respondent’s website “www.liftworks.co.uk” while awaiting legal advice and suggested that the Complainant may wish to make a more realistic offer for the disputed domain name. The Complainant replied on February 7, 2012 that it was not willing to pay beyond reasonable “out of pocket expenses”. On August 1, 2012 the Complainant’s legal representative demanded the transfer of the disputed domain name and again offered to pay EUR 200. No response was received to the demand or a subsequent reminder.
5. Parties’ Contentions
The Complainant contends that the disputed domain name and its trademark are nearly identical, that the trademark is completely contained in the disputed domain name and that the additive “lifts” is descriptive and a direct reference to the business of the Schindler Group.
The Complainant considers that the Respondent has intentionally registered the disputed domain name to direct potential customers of the Schindler Group to the website of the Respondent in order to take unfair advantage from the reputation and goodwill of the Complainant’s trademark.
The Complainant considers that the business activities of the Complainant and the Respondent are identical and Internet users are misled into thinking that the Respondent is in some way connected or affiliated with the Schindler Group and its business or is an authorised licencee of the Schindler Group which is not the case.
The Complainant contends that the Respondent’s attempt to sell the disputed domain name to the Complainant for a sum clearly in excess of the Respondent’s out of pocket costs reinforces the conclusion that the disputed domain name was registered by the Respondent in bad faith to profit from the Complainant’s trademark registrations.
The Complainant contends that although the Respondent has temporarily suspended the automatic redirection of traffic from the disputed domain name that action does not detract from the fact that the Respondent has already used the disputed domain name in bad faith. Also, it is the Complainant’s view there is no guarantee that the Respondent will not recommence use of the disputed domain name.
Finally, the Complainant considers that the Respondent’s failure to answer the Complainant’s attorney or to comply with the attorney’s demands is another indication of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Complainant provided evidence demonstrating that it has had registered rights in the SCHINDLER trademark since 1927.
The disputed domain name consists of the Complainant’s trademark in its entirety together with the suffix “-lifts”, and the gTLD extension “.com”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The key difference between the Complainant’s trademark and the disputed domain name is the addition of the descriptive/generic word “lifts” which in the Panel’s opinion cannot be considered distinctive and is clearly insufficient to prevent Internet user confusion. As found in Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871, the addition of a descriptive term does not typically serve to distinguish a disputed domain name but, may serve to accentuate rather than to diminish the confusing similarity. In fact, the additional word “lifts” refers to a generic business sector in which the Complainant operates which increases the likelihood of confusion to Internet users (see Guccio Gucci S.p.A. v. Bravia Stoli, WIPO Case No. D2009-1170).
Finally, as noted by the panel in Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056, the additional word is too tenuous and insubstantial to detract from the conclusion that the disputed domain name is confusingly similar to the Complainant’s trademark where the latter is included in its entirety in the disputed domain name.
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use the disputed domain name that reflects the Complainant’s trademark in its entirety without authorisation by the Complainant. Based on the evidence provided by the Complainant the disputed domain name was initially set up to divert Internet user traffic to the Respondent’s website but following contact from the Complainant it has become inactive (the disputed domain name currently redirects to “www.123-reg.co.uk”, the Registrar’s website). No rights or legitimate interests derive from such use of the disputed domain name incorporating the Complainant’s trademark.
The Complainant has denied having any connection with the Respondent and that the use of its trademark is without authority. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
The Panel considers the Respondent lacks rights or legitimate interests. See Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the disputed domain name, it must have known that it was a trademark of the complainant and deliberately registered the disputed domain name precisely because it would be recognised as such. As stated by the panel in Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 “Manifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative procedure the Respondent has chosen not to rebut the Complainant’s case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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 Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel’s view the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainant’s trademark rights. Clearly the Respondent knew of the Complainant’s well-known trademark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As stated in Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100 “It is inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection in that case of the disputed domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The Panel finds it most likely that the domain name was initially registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain. Currently the Respondent is passively holding the disputed domain name. Such inactive used does not prevent a finding of bad faith especially when the circumstances include the Respondent’s use of a well-known mark and its lack of response to the Complaint (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Noting that the Respondent has not rebutted any of the Complainant’s contentions and the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith.
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 <schindler-lifts.com> be transferred to the Complainant.
Date: January 22, 2013