WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Otis Elevator Company v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Shaikat Talukder

Case No. D2021-1775

1. The Parties

The Complainant is Otis Elevator Company, United States of America (“United States”), represented by Cantor Colburn LLP, United States.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Shaikat Talukder, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <usotiselevator.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2021. On June 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 9, 2021.

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 of the Complaint, and the proceedings commenced on June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2021.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on July 28, 2021. 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 is one of the world’s largest manufacturer of elevators, escalators, moving walkways and other moving products. The Complainant offers products and services through affiliated companies in over 200 countries and territories.

The Complainant has been using the name and mark OTIS in connection with its business since on or about 1853.

The Complainant owns numerous applications and registrations for the trademark OTIS throughout the world, among which:

- United States trademark registration No. 0214019 registered on June 8, 1926 in class 7;
- United States trademark registration No. 1182632 registered on December 22, 1981 in classes 7 and 9.

The Complainant operates its official website under the domain name <otis.com>.

The disputed domain name was registered on November 21, 2017.

At the time of filing of the Complaint, the disputed domain name redirected to a website with contents conveying the impression that it was an official website of the Complainant. This website featured the full name of the Complainant and the trademark OTIS. It included sections on elevators and other related goods and services. A section entitled “about Otis” was drafted as if the Complainant was describing its own company and business, and the street address indicated on the homepage corresponded to the Complainant’s address. On the other hand, the email address provided on such homepage was built with the disputed domain name.

The Respondent displayed on this website images that infringed upon the copyright of third parties. The Complainant received indeed a cease and desist letter from a representative of Associated Press dated February 25, 2021.

The Complainant sent by email a notice of intellectual property infringement to the Respondent on April 26, 2021. The Respondent did not answer this email.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademark OTIS. Indeed, the disputed domain name fully incorporates its famous mark OTIS surrounded by descriptive wording. The initial term “us” is geographically descriptive and “elevator” identifies the Complainant’s main products sold under the mark OTIS.

The Complainant further contends that it is unaware of any prior rights that the Respondent may have over OTIS, nor of any relationship between it and the Respondent that would give rise to any authorization for the Respondent to own or use the disputed domain name. The Respondent is not commonly known by the disputed domain name. Moreover, according to the Complainant, as the disputed domain name is being used to mislead consumers into believing that the Respondent’s website is an official website of the Complainant or is approved by the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Finally, the fact that the Respondent is hosting images infringing upon the rights of third parties is further evidence of its absence of rights or legitimate interests in the disputed domain name.

Finally, the Complainant contends that the Respondent knew of the existence of its trademark OTIS given its fame, so that the Respondent registered the disputed domain name in bad faith. According to the Complainant, it is not possible to contemplate any use of the disputed domain name that would not constitute an infringement of the Complainant’s rights in its trademark. The disputed domain name is being intentionally used to host a website that conveys the misleading impression that it is an official website of the Complainant, or is otherwise officially authorized, sponsored or endorsed thereby. These actions demonstrate, in the Complainant’s eyes, an intention to unlawfully profit from the use of the Complainant’s trademark or misdirect customer traffic from the Complainant’s legitimate websites, thereby disrupting its business in violation of the Policy and Rules.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith

A. Identical or Confusingly Similar

The Complainant owns various trademark registrations for the mark OTIS.

The disputed domain name reproduces the Complainant’s trademark in its entirety with no alteration and combines this trademark with the term “us”, which may easily be recognized as a geographical descriptive term for the United States, and with the term “elevator”.

As a rule, UDRP panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the trademark OTIS is recognizable in the disputed domain name. In addition, the adjunction of the terms “us” and “elevator” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see, for example, DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-3141).

UDRP panels also generally accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.

The Respondent does not appear to have operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use of the disputed domain name. Instead, the disputed domain name redirected to an active website purporting to be an official website of the Complainant, which in the Panel’s view demonstrates an obvious attempt on the part of the Respondent to mislead Internet users seeking the Complainant’s services and website.

Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.

Therefore, the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith.

Given the distinctive and well-known character of the trademark OTIS, the Panel accepts that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name. The Respondent therefore registered the disputed domain name in bad faith.

The Respondent used the disputed domain name in connection with an active website purporting to be an official website of the Complainant, but indicating an email address built with the disputed domain name. This use was apt to lead Internet users into believing that the website at issue was an official website of the Complainant, and that they could contact the Complainant either by means of the contact form available on the website, or by means of the provided email address including the disputed domain name. Any such communication would presumably have been received by the Respondent.

Under these circumstances, the Panel considers it likely that the Respondent intended to use the disputed domain name as a support for a potential fraudulent scheme, namely to impersonate the Complainant and extract personal or financial data from Internet users visiting his or her website. Previous UDRP panels have founds that such behavior amounts to use of a domain name in bad faith (see Marriott International, Inc., Marriott Worldwide Corporation and The Ritz-Carlton Hotel Company, LLC v. Van C Bethancourt Jr., Andre Williams, WIPO Case No. D2018-2428 and Accor v. Sangho Heo, Contact Privacy Inc., WIPO Case No. D2014-1471).

By using the disputed domain name in such manner, the Respondent intentionally attempted to attract, for the purposes of commercial gain, Internet users to his or her website by creating a likelihood of confusion with the Complainant's mark as to the source and affiliation of this website. Such behaviour constitutes use in bad faith under paragraph 4(b)(iv) of the Policy.

Finally, the hosting, on the Respondent’s website, of images infringing upon the copyright of third parties corroborates the Panel’s finding of use of the disputed domain name in bad faith, as by acting so, the Respondent exposed the Complainant to threatened liability.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

7. Decision

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 <usotiselevator.com> be transferred to the Complainant.

Anne-Virginie La Spada
Sole Panelist
Date: August 10, 2021