WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inventio AG v. Islam Dindan, Liftkom Lifts & Escalators Contracting LLC
Case No. D2021-1261
1. The Parties
Complainant is Inventio AG, Switzerland, internally represented.
Respondent is Islam Dindan, Liftkom Lifts & Escalators Contracting LLC, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <schniedergermanliftgroup.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2021, 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 April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 21, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 31. 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
Complainant, together with its corporate affiliates (collectively, “Complainant”) is a global provider of elevator, escalator, moving walkway, and maintenance services.
Complainant owns the SCHINDLER mark, as well as composite marks with the term SCHINDLER and design, as follows:
Complainant has used its SCHINDLER marks in connection with its goods and services for over a century. Complainant owns numerous registrations for these marks, including, among others, International Registration No. 883565 (registered January 13, 2006) and International Registration No. 1265628 (registered May 1, 2015).
Complainant additionally interacts with consumers and prospective consumers via its online presence. In this regard, Complainant owns the registration for the domain name <schindler.com>. Complainant uses the URL associated with this domain name to inform prospective consumers about its products and services offered under the SCHINDLER marks.
The disputed domain name, <schniedergermanliftgroup.com>, was registered on February 25, 2020. The URL associated with the domain name is linked to a website that, as of October 27, 2020, advertised “Swiss‑engineered elevators, escalators, and moving walks . . . ”. The website also includes references to the following composite word and design mark:
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it has long, established rights in its registered SCHINDLER marks, including its composite word and design mark:
Complainant contends that its SCHINDLER brand is one of the most valuable brands in Switzerland, and that, with operations in over 100 countries, Complainant was valued in 2020 at CHF 10.6 billion. Complainant contends that the disputed domain name is a deliberate misspelling of its well-known SCHINDLER mark, along with the dictionary terms “german”, “lift” and “group”, which describe Complainant’s business. Complainant contends that Respondent was aware of Complainant’s mark at the time Respondent registered the disputed domain name. In this regard, Complainant contends that although Respondent filed a trademark application in Turkey for the mark appearing on the website associated with the disputed domain name, Complainant was able to successfully oppose that registration, which decision was not appealed by Respondent, and remains final. Thus, Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, apparently for Respondent’s own commercial gain.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
In making this determination, the Panel may consider the “broader case context such as website content trading off the complainant’s reputation”. See WIPO Overview 3.0, Section 1.7. As noted in section 4 of this Panel’s decision, the website associated with the disputed domain name refers to information that appears to be intended to confuse consumers looking for Complainant’s “Swiss-engineered elevators, escalators, and moving walks . . . ”. The website also includes references to the following composite word and design mark:
Such use of the disputed domain name affirms the confusing similarity, as the Respondent seeks to target the Complainant’s trademark through the disputed domain name and its website.
The disputed domain name contains what appears to be a deliberate misspelling of Complainant’s SCHINDLER mark, with the term “schnieder”, along with the dictionary terms “german”, “lift” and “group”. While the disputed domain name might appear to indicate a German surname, the term included, “schnieder”, is not the German surname “Schneider”. Rather, it does appear to be a term intended to confuse consumers. Prior UDRP panels have routinely found typosquatted domain names to be “confusingly similar” for purposes of a finding under the UDRP. See Edmonds.com, Inc. v. Yingkun Guo, WIPO Case No. D2006-0694 (<edunds.com>); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (<disneychanel.com>, <disneywolrd.com>, <walddisney.com>); See also Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-0194 (<credidkarma.com>).
Furthermore, numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step‑Web, WIPO Case No. D2000‑1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).
Under the totality of the circumstances, the Panel finds that the disputed domain name is sufficiently confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location”.
As noted in section 4 of this Panel’s decision, the URL associated with the disputed domain name is linked to a website that, as of October 27, 2020, advertised “Swiss-engineered elevators, escalators, and moving walks . . . ”. The website also includes references to the following composite word and design mark:
Hence, there is sufficient evidence that Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the use, and the disputed domain name, the Panel finds that Complainant has sufficiently proven that Respondent has registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith, which evidence has not been rebutted by Respondent.
Overall, the Panel finds that, for purposes of the UDRP, there is sufficient evidence that Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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, <schniedergermanliftgroup.com>, be transferred to Complainant.
Dated: June 14, 2021