The Complainant is Inventio AG of Hergiswil, Nidwalden, Switzerland, internally represented.
The Respondent is Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States of America / William Liu, Liu GuoFu of A Murray, Utah, United States of America and of ZhongShan, GuangDong, China. 2. The Domain Names and Registrars
The disputed domain names , , and are registered with FastDomain, Inc.
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 3, 2012, the Registrar FastDomain, Inc. transmitted by email to the Center its verification response confirming that the Respondent Liu GuoFu is listed as the registrant and providing the contact details. On October 6, 2012, the Registrar GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent Liu GuoFu 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 October 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2012. The Respondent did not file a formal Response with the Center. Accordingly, the Center notified the Respondent’s default on October 31, 2012. Subsequently the Respondent using the name “William Liu” transmitted several email communications to the Center and the Complainant between November 2 and November 13, 2012. In response to the Respondent’s claim that he had not received the Complaint by October 30, 2012, the Center stated by email on November 7, 2012, that it had sent the Complaint to all contact details made known to the Center by the Complainant and the concerned Registrars as per paragraph 2(a) of the Rules.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 12, 2012. 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 a wholly owned subsidiary of Schindler Holding AG, which is the parent company of the Schindler group of companies. The Schindler group are suppliers of, principally, elevators, escalators, moving walkways and related equipment. The Schindler group began in Lucerne, Switzerland, in 1874 when Robert Schindler built a mechanical engineering workshop for the production of lifting equipment and machines of all types. The Schindler group today has approximately 44,000 employees in more than 100 countries, and annual operating revenue of some billions of Swiss Francs.
The Complainant was established in 1933 as a joint stock legal entity to administer, hold and license the intellectual property of the Schindler group. The Complainant is the owner of the trademark SCHINDLER and various related trademarks. The trademark SCHINDLER has been registered in more than 150 countries, dating from at least as early as 1981.
The disputed domain name was registered on March 11, 2010 in the name of Liu GuoFu. It currently resolves to a website with the title “Google Apps”. The disputed domain names and were registered on September 6, 2012, and the disputed domain names and were registered on September 7, 2012, in the name of Liu GuoFu. They currently resolve to websites containing links to a range of other websites, some of which appear related to lift and elevator products and others of which appear to have no relation to the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the disputed domain names is subject to the common ownership of Lui GuoFu, as evidenced by the fact that Liu GuoFu is the registrant name for each of the disputed domain names and by the fact that common ownership was not disputed in the various communications to the Complainant sent by the registrant.
The Complainant contends that the disputed domain names are nearly identical to the Complainant’s trademark SCHINDLER. The trademark SCHINDLER is completely contained in the disputed domain names, with the word “schindler” being the dominant component in the word combinations “schindler-lift”, “schindlerlift” and “schindler-elevator”. Indeed, the addition of the words “lift” and “elevator” are descriptive and a direct reference to the business of the Schindler group, and thus increase the similarity between the disputed domain names and the trademark SCHINDLER.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names because: (i) it has not licensed or otherwise consented to the use of the trademark SCHINDLER by the Respondent; (ii) as the designation “Schindler” is well-known in the elevator business, there is no doubt the Respondent registered the disputed domain names to sell them to the Complainant or a competitor for a consideration in excess of the Respondent’s out-of-pocket expenses, and this is particularly so regarding the four disputed domain names registered in September 2012, well after the Complainant’s email of July 19, 2010, explaining the Complainant’s business, its trademarks and its intention to file a complaint regarding the disputed domain name ; (iii) the Respondent has not asserted any rights to the designation “Schindler” in its reply to the Complainant’s letters of July 14, 2010, July 19, 2010, September 4, 2012 and September 17, 2012; and (iv) the disputed domain names are not being used by the Respondent in connection with any bona fide offering of goods and services, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names, as the websites to which they resolve are either not functional or inactive.
The Complainant contends that the disputed domain names were registered and are being used in bad faith because they were registered primarily for the purpose of selling the disputed domain name registrations to the Complainant or a competitor of the Complainant as evidenced by: (i) the Respondent’s response to a letter from the Complainant on July 14, 2010, seeking the transfer of the disputed domain name whereby the Respondent demanded USD 10,000 in return for the transfer; (ii) the Respondent’s response to the Complainant’s follow-up warning letter of August 10, 2012, offering USD 500 for the transfer of said disputed domain name, whereby the Respondent demanded USD 20,000, reducing to USD 15,000 after further email correspondences; and (iii) following the discovery of the disputed domain name being registered on September 6, 2012, and that the email address of the registrant is identical to that of the registrant of the disputed domain name , the Complainant sent the Respondent a warning letter requesting the transfer of to which the Respondent demanded USD 20,000. B. Respondent
The Respondent did not file a formal response. However, the Respondent under the name “William Liu” transmitted several emails to the Center between November 2, 2012, and November 13, 2012, making various statements including: (i) he had not received the Complaint; (ii) he was waiting for a decision in a China court of law; (iii) he wanted an extension of time to file a response; (iv) he had only registered the disputed domain names but was not using them to operate a business; (v) he wanted mediation first; (vi) he didn’t understand why the Complainant offered to buy the disputed domain names; (vii) he did not want to sell them; (viii) and he did not know what “schindler” was at the time of registering the disputed domain name on March 11, 2010. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain names incorporate the whole of the Complainant’s registered trademark SCHINDLER, and add the descriptive words “lift” or “elevator”. The Panel finds the addition of these descriptive words does not lessen the inevitable confusion of the disputed domain names with the Complainant’s trademark. This is especially so given that the Complainant’s business is in the area of lifts and elevators. Accordingly, this Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its SCHINDLER trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. The websites to which the disputed domain names resolve either are not functional or are landing pages with automatically-generated links to a diverse range of other websites many of which do not appear to be connected with elevators or lifts. According to the present record, the disputed domain names are not being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The disputed domain names were registered around three decades after the Complainant’s SCHINDLER trademark was first registered, and many decades after the Schindler group began its lift and elevator business under the name “Schindler”. The evidence on the record provided by the Complainant with respect to the use of its SCHINDLER trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain names were registered, the Respondent most likely knew of the Complainant’s trademark and knew that he had no rights or legitimate interests in the disputed domain names. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent wanted to sell the disputed domain names to the Complainant for valuable consideration in excess of the out-of-pocket expenses related to the disputed domain names, which according to paragraph 4(b)(i) of the Policy is evidence of the registration and use of the disputed domain names in bad faith. For all these reasons, this Panel is satisfied that the disputed domain names have been registered and are being used in bad faith. 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 names , , , and be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: November 26, 2012
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