WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inventio AG v. Cong ty co phan hop tac quoc te dau tu phat trien / Nguyen Thi Thanh Hien / Nguyen Van Quyet
Case No. D2018-0609
1. The Parties
The Complainant is Inventio AG of Hergiswil, Switzerland, internally-represented.
The Respondent is Cong ty co phan hop tac quoc te dau tu phat trien of Hanoi, Viet Nam / Nguyen Thi Thanh Hien of Hanoi, Viet Nam / Nguyen Van Quyet of Ha Noi, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <thangmayschindler.com>, <thangmayschindler.net> and <schindlervn.com>, (collectively “Disputed Domain Names”) are registered with P.A. Viet Nam Company Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2018. On March 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name <schindlervn.com>, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint and requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 in English and Vietnamese of the Complaint, and the proceedings commenced on April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 3, 2018. 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, Inventio AG, is a wholly-owned subsidiary of Schindler Holding AG in Hergiswil, Switzerland (“Schindler”). Schindler is one of the world’s largest manufacturers of elevators, escalators and walkways with approximately 60,000 employees in more than 100 countries. Revenue of Schindler in 2017 was almost CHF 10.2 billion.
Schindler has operated in Viet Nam since 1995 via Schindler Vietnam Ltd., one of the first foreign-owned elevator companies in Viet Nam. In 1998, Schindler started its own factory in Viet Nam, which produces brackets, beams and builder’s elevators for both local and export purposes.
The Complainant, as the intellectual property company of Schindler, owns numerous trademark registrations for the mark SCHINDLER and SCHINDLER and device covering a large range of goods and services such as elevators, escalators, moving walkways, electrical and electronic items, including monitoring, security and alarm systems as well as other building technology and related installation, inspection, maintenance and repair services in jurisdictions throughout the world (including European Union Trademark No. 003258795, registered on December 10, 2004). The Complainant also grants licenses to use its intellectual property, including but not limited to trademarks, and manages as well as supervises the ongoing use of the SCHINDLER marks.
The Respondent registered the first Disputed Domain Name <thangmayschindler.com> on September 19, 2014. The website under this Disputed Domain Name was a copy of the website “www.schindler.com”, which was used by Schindler and Schindler Vietnam Ltd. The Complainant sent a cease-and-desist letter to the Respondent on October 22, 2014 and a reminder on November 18, 2014 and December 4, 2014. The Respondent did not reply but deactivated the website under the Disputed Domain Name <thangmayschindler.com> by latest October 31, 2014.
On December 5, 2015, the Respondent additionally registered the second Disputed Domain Name <thangmayschindler.net>, which has been used in the same manner as the Disputed Domain Name <thangmayschindler.com>. The Complainant sent another cease-and-desist letter to the Respondent on December 18, 2015. The Respondent replied by an email dated December 21, 2015 that they were promoting and selling elevators only, so they would not stop the use of the Disputed Domain Names. Later, on March 24, 2016, the Respondent sent another email to the Complainant stated that they would stop all websites using the brand Schindler.
Despite the commitment to stop the websites on March 24, 2016, the Respondent registered the third Disputed Domain Name <schindlervn.com> on May 9, 2016. That Disputed Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that SCHINDLER and its combinations thereof are known as trademarks, company name and trade name of Schindler. The SCHINDLER mark was firstly registered in Australia in 1927. Since then, the SCHINDLER mark has been registered in more than 150 countries, including, but not limited to (i) under International Registration No. 1265628 for SCHINDLER in Classes 6, 7, 9, 37, 38, 42 and 45; (ii) International Registration No. 883565 for SCHINDLER and device in Classes 6, 7, 9, 16, 35, 37, 38, 42 and 45, both designating Viet Nam; and (iii) European Union trademark SCHINDLER Registration No. 003258795 for SCHINDLER in Classes 7, 9, 16, 35, 37, 42 and 45.
Through the long-time and extensive use and registrations, the SCHINDLER mark has acquired significant goodwill and become a well-known mark all over the world.
The Complainant further contends that the Disputed Domain Names are confusingly similar to the Complainant’s SCHINDLER mark, as the word “schindler” is completely contained in the Disputed Domain Names, and the addition of the generic and descriptive Vietnamese words “thangmay”, which means “elevator” in English, and “vn”, which is the abbreviation for Viet Nam, is not sufficient to exclude the similarity. The generic Top-Level Domains (“gTLDs”) “.net” and “.com” in the Disputed Domain Names shall be disregarded when performing the confusing similarity assessment.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, by arguing that: (a) the Respondent is active in the elevator industry, the same as the business of Schindler; (b) the Respondent does not use the Disputed Domain Names either for any bona fide offering of goods/services nor for making any legitimate noncommercial or fair use of the Disputed Domain Name; (c) the Complainant has granted neither license nor authorization of any other kind to the Respondent for the registration and use of the trademark SCHINDLER; (d) the Respondent has removed its websites and has not claimed any rights over the term “Schindler” nor any bona fide offering of goods and services after receiving the cease-and-desist letter dated October 22, 2014 from the Complainant; (e) following the cease-and-desist letter dated December 18, 2015 from the Complainant, the Respondent confirmed that it had been aware of trademark SCHINDLER of the Complainant and committed that he would stop all use of the websites at issue.
(iii) The Disputed Domain Names were registered and are being used in bad faith.
The Complainant argues that the Respondent is familiar with Schindler prior to the registration of the Disputed Domain Names due to the fact that the trademark, tradename and company name Schindler are well-known in the market. The Complainant also owns more than 1,100 domain names containing the designation “schindler”. In addition, the Respondent used the Complainant’s SCHINDLER and device trademark on the website under the first Disputed Domain Name <thangmayschindler.com> within less than a month since the registration of this Disputed Domain Name.
The Complainant further contends that the Respondent has repeatedly registered new domain names containing designation “schindler” to take advantage of well-known name and reputation of Schindler to promote its own elevator business, even though the Respondent has confirmed its awareness of SCHINDLER mark of the Complainant.
The Respondent deactivated the websites under the Disputed Domain Names <thangmayschindler.com> and <thangmayschindler.net> after receiving the cease-and-desist letters from the Complainant. However, shortly after, the Respondent registered the third Disputed Domain Name <schindlervn.com> as well as renewed the first and second Disputed Domain Names for a further 10 years.
The websites under the Disputed Domain Names <thangmayschindler.com> and <thangmayschindler.net> were copies of the website “www.schindler.com” of the Complainant, which creates an impression that it is a Schindler website or at least sponsored or endorsed by the Complainant.
The Complainant further submits that the Respondent conducts in a pattern of bad faith use of domain names containing well-known trademarks of third parties, for example, the domain name <mitsubishi.com.vn>. The Respondent conceals its identity in respect of the Disputed Domain Name <schindlervn.com> by using a privacy service. The identity concealment of the Respondent in this case contributes to the accumulation of elements pointing to bad faith registration. The non-use of the Disputed Domain Names does not prevent a finding of bad faith under the doctrine of passive holding.
Consequently, the Complainant contends that three elements under the Policy have been established and requests for a transfer of the Disputed Domain Names to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of proceeding
The Complaint was filed in English on March 20, 2018. On March 23, 2018, the Registrar informed the Center that the language of the Registration Agreements is Vietnamese, and the Center invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondent to comment on the language of the proceeding.
On March 23, 2018, the Complainant sent the Center an email requesting for English to be the language of the proceeding. The Respondent did not give any comments on this issue.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a Swiss business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and
(ii) the English language is quite popular in Viet Nam, where the Respondent is located; the Respondent has registered at least one domain name containing the English word “elevator” and each website under the Disputed Domain Names comprised a sub website, in which all contents were translated into English; the Respondent has received the cease-and-desist letters written in English and responded to that cease-and-desist letter by deleting the content of its websites; these suggest that the Respondent has ample knowledge of the English language and is able to communicate quite well in English.
For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
6.2 Consolidation of Respondents
The Panel agrees with the Complainant’s evidence and arguments that the three nominally distinct Respondents are all connected to each other through their contact information; the content and layout of the websites under the Disputed Domain Names are substantially the same; all three Disputed Domain Names are registered with the same Registrar; and the Respondent did not deny, in its reply to the Complainant’s warning letter of December 18, 2015, the common ownership / control of the Disputed Domain Names. Hence, per paragraph 10(e), the Rules, the Panel agrees to consolidate multiple Disputed Domain Names and multiple Respondents into one UDRP proceeding.
6.3 The Respondent’s failure to respond
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
6.4 Substantive Issues
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements is present:
(i) the Disputed Domain Names registered by the Respondent are 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Names are identical or confusingly similar to its trademark.
Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SCHINDLER. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular, to manufacture and offer elevators, escalators and walkways to customers worldwide.
Secondly, the Disputed Domain Names comprise the Complainant’s SCHINDLER mark in which the Complainant has rights. The difference between the Disputed Domain Names and the SCHINDLER mark are (i) the addition of the prefix “thangmay” in the first and second Disputed Domain Names, which can be written with accent marks as “thang máy” in Vietnamese and means “elevator” in English; and (ii) the addition of suffix “vn” in the third Disputed Domain Name, which is the abbreviation of “Viet Nam”, a country where the Complainant doing business. With those meanings, these elements should be considered as descriptive terms. The Panel finds that SCHINDLER remains the dominant element in the Disputed Domain Names. It is well established that the addition of descriptive terms (such as “thangmay” or “vn”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said elements does nothing to distinguish the Disputed Domain Names from the trademark, nor to dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., Pentair, Inc. v. Hoang Van Tao, WIPO Case No. D2015-0573; AB Electrolux v. Nguyen Van Dien, WIPO Case No. D2016-1793; AB Electrolux v. Pham Van, CTY TNHH Thuong Mai Dich Vu Dien Lanh Viet Thai, WIPO Case No. D2016-2417; Compagnie Générale des Etablissements Michelin v. HoangVu Luu, WIPO Case No. D2014-1016).
Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the gTLDs “.com” and “.net” to the Disputed Domain Names does not help avoid confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the basis of the foregoing findings, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s SCHINDLER mark, and the first element under paragraph 4(a)(i) of the Policy is established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s SCHINDLER mark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the SCHINDLER mark.
A reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other prior UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see, e.g., AB Electrolux v. Nguyen Van Dien, WIPO Case No. D2016-1793; AB Electrolux v. bui van quynh, WIPO Case No. D2013-1988).
However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria. On the websites under the Disputed Domain Names, the Respondent did not place any statement or disclaimer disclosing its actual relationship with the Complainant. Instead, the interfaces of the websites were reproductions of the Schindler website, and the SCHINDLER mark was displayed therein. This fact further demonstrates the Respondent’s intention to create an impression of a false association with the Complainant. For all foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Names cannot be considered a bona fide offering of goods or services.
In addition, the Panel finds that there is no evidence of the Respondent being commonly known by the Disputed Domain Names. Further, it is evident that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, but instead, aims at commercial gain by misleadingly diverting consumers to its websites by riding on the fame of the SCHINDLER mark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the second element under paragraph 4(a)(ii) of the Policy is established.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Names in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel further finds that the Complainant’s SCHINDLER mark has been registered in jurisdictions throughout the world and enjoys significant reputation. The Complainant’s SCHINDLER mark has been registered and used in, among others, Viet Nam where the Respondent resides. In this respect, the Panel believes that the Respondent must have known and be aware of the rights in the prior well-known SCHINDLER mark and the associated products by the time of the registration of the Disputed Domain Names.
Also, given the fact that the SCHINDLER mark is not descriptive of anything in Vietnamese other than its association with the products of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Names incorporating the SCHINDLER mark without knowledge thereof (see, Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment, WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected these Disputed Domain Names without any knowledge of the Complainant and its SCHINDLER mark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
In addition, with the Respondent’s use of the SCHINDLER mark in the websites under the Disputed Domain Names, along with the fact that websites’ interfaces were copied from the Schindler website, and no disclosure of the actual relationship with the Complainant was presented, the Panel finds that the Respondent’s actual use of the Disputed Domain Names misleads consumers and confuses them by making them believe that the respective website is associated, fostered or recommended by the Complainant.
Besides, the Panel notes the facts that besides the Disputed Domain Names, the Respondent also registers several domain names with the country code Top-Level Domain (“ccTLD”) “.vn” bearing the Schindler mark. Although the “.vn” domain names are not subject to this UDRP case, the Panel opines that the conduct of the Respondent in relation to all these domain names has constituted a pattern of abusive conduct against the Complainant. Such a bad pattern and behaviour is further demonstrated by the fact that the Respondent, via its emails dated December 21, 2015 and March 24, 2016, confirmed that it was aware of the Complainant’s SCHINDLER mark and would stop use of all websites using the Complainant’s brand, but despite that commitment, the Respondent registered the third Disputed Domain Name. This is surely an indication of bad faith.
The fact that the Disputed Domain Names currently resolve to inactive websites does not prevent a finding of bad faith registration and use.
As a result, the Panel opines that the Respondent’s purpose in registering the Disputed Domain Names is to capitalize on the reputation and goodwill of the Complainant’s trademark, and thus generate unjustified revenues. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b) of the Policy, on the part of the Respondent.
In light of the foregoing, the Panel finds that the Disputed Domain Names were registered and used by the Respondent in bad faith, and the third element under paragraph 4(a)(iii) of the Policy is established.
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 Names, <schindlervn.com>, <thangmayschindler.com> and <thangmayschindler.net> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Date: May 14, 2018