The Complainant is INVENTIO AG of Hergiswil NW, Switzerland, represented internally.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Name Redacted. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2016. On February 1, 2016, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On February 1, 2016, 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 February 4, 2016 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 February 9, 2016. As requested by the Complainant on February 11, 2016, the Panel has agreed to redact the Registrar-confirmed name used by the registrant of the disputed domain name, as being apparently fictitious and misleading. Attached at Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the disputed domain name that includes the said name, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published, based on exceptional circumstances (see Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788).
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 February 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on March 9, 2016. 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, a company based in Switzerland, and part of the Schindler Group, who manufacture and supply elevators, escalators, moving walkways and related equipment.
The Schindler Group of companies can trace its history back to 1874. Since that time, the Schindler Group has significantly expanded, both in terms of its size and the territorial scope of its commercial operations. It now employs more than 54,000 employees in over 100 countries globally, and is one of the largest manufacturers of elevators, escalators and moving walkways worldwide. The Schindler Group first established a presence in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) in 1960.
The Complainant holds and manages the intellectual property of the Schindler Group, including dealing with its licensing arrangements. In addition to international trade marks for SCHINDLER, the Complainant owns numerous other trade mark registrations, including:
- Community trade mark No. 003258795 for SCHINDLER, registered on December 10, 2004 in classes 7, 9, 16, 35, 37, 42 and 45.
- United Kingdom trade mark No. 2002660 for SCHINDLER, registered on December 29, 1995 in classes 7, 9 and 37.
Additionally, the Complainant has over 700 domain names registered, which incorporate the word mark, SCHINDLER.
The disputed domain name was registered on April 12, 2015. The disputed domain name does not resolve to an active website. The nominal registrant of the disputed domain name is a privacy protection service, which has been used to conceal the identity of the true registrant (referred to in this decision as the Respondent). The name of the Respondent supplied by the Registrar to the Center is believed to be false. Accordingly, the Panel has redacted the name of the individual listed as the registrant on the record of registration from this decision, on the basis that this appears to be fictitious.
Evidence is provided within the Complaint that the Respondent contacted a Colombian employee of the Schindler Group on April 13, 2015 by telephone to request that he provide it with supplier information belonging to the Schindler Group. The employee asked the Respondent to send an email to him clarifying what was required. The Respondent then sent emails from an email address correlating to the disputed domain name which purported to be from a senior employee of the Complainant seeking the information which had first been requested over the telephone. 5. Parties’ Contentions A. Complainant
The Complainant draws attention to its extensive trade mark portfolio of trade marks for SCHINDLER, including the two trade marks specifically mentioned above. It asserts that these give it recognised rights in the name SCHINDLER. It also states that its rights in SCHINDLER have been recognised by a previous panel decision, namely Inventio AG v Lee Lines,WIPO Case No. D2012-2230. Furthermore the Complainant asserts that its trade marks for SCHINDLER are well known in the United Kingdom and in other countries worldwide.
The Complainant says that the disputed domain name is confusingly similar to its SCHINDLER trade marks. Although the disputed domain name comprises the acronym “uk” followed by a hyphen prior to the word “schindler”, the Complainant says that its trade mark for SCHINDLER is wholly incorporated into the disputed domain name and remains the dominant component of it. It explains that “uk”, is widely recognised as an abbreviation for the United Kingdom, a country in which the Schindler Group is operating and where the Complainant has registered trade mark rights. As a consequence, the Complainant contends that the addition of “uk” as a prefix to its SCHINDLER trade mark will serve to increase confusion in the minds of Internet users as to the legitimacy of the disputed domain name and any website or email address which uses the disputed domain name. In addition, the Complainant says that the choice of the disputed domain name was a calculated and deliberate choice by the Respondent to mimic the standard format of Schindler Group email addresses which utilise the Complainant’s domain name at and which also use recognised two letter country code prefixes. Accordingly, the Complainant says that the disputed domain name is confusingly similar to a trade mark in which it has rights.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. It states that Respondent has not been licensed or authorised by the Complainant to use any of its SCHINDLER trade marks.
The Complainant contends that the disputed domain name is not being used by the Respondent in connection with a bona fide offering of goods and services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. It says that the Respondent used an email address utilising the disputed domain name to impersonate a well known and senior employee within the Schindler Group to request confidential information to which it was not entitled.
By a letter dated May 21, 2015, the Complainant requested that the Respondent show its rights and legitimate interest in the Complainant’s SCHINDLER trade marks. The Complainant says it received no reply from the Respondent and that the Respondent also failed to respond to a letter from the Complainant dated June 15, 2015 requesting that the Respondent assign the disputed domain name to it in consideration of payment by the Complainant of the Respondent’s out-of-pocket expenses. The Complainant says that the Respondent has failed to reply to a further letter dated July 27, 2015 informing the Respondent that an email from an email address connected to the disputed domain name had been used for a social engineering / phishing attack against the Schindler Group. The absence of any response to this correspondence, the Complainant contends, is an indication that the Respondent lacks any rights or legitimate interest in the disputed domain name. Further, the Complainant contends that, as the Respondent has not replied to any of the Complainant’s correspondence, the burden of proving that the Respondent has rights or a legitimate interest in the disputed domain name, has now shifted onto the Respondent.
The Complainant says that the dispute domain name was registered and used in bad faith. The Complainant points out that the Respondent must have known of its SCHINDLER trade marks when it registered the disputed domain name because, the day after registration of the disputed domain name, the Respondent sought to use an email address derived from the disputed domain name to obtain confidential information from the Complainant. The Complainant contends that the disputed domain name was picked as a deliberate and calculated choice because of the high degree of similarity between email addresses connected with the disputed domain name and the standard form of email addresses used by the Schindler Group. These consist of recognised two letter country code prefixes used in conjunction with “.”; for example “us.” for employees based in the United States of America. The high degree of similarity between these email addresses and those correlating to the disputed domain name was, the Complainant asserts, exploited by the Respondent for the purposes of unlawfully attempting to procure confidential information from the Schindler Group. The Complainant says that this behaviour demonstrates that the disputed domain name was both registered and used in bad faith.
Lastly, the Complainant says that as a result of Internet searches against the Respondent’s WhoIs contact email address, it has discovered that the Respondent has registered the domain names, and and that these two domain names and the disputed domain name are all registered under different names. On the basis of this information, the Complainant asserts the Respondent is engaging in a pattern of bath faith registration of domain names incorporating well known trade marks, using false names and false contact details. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Center transmitted notice of the Complaint and commencement of these proceeding to the Respondent by email and express courier. As explained above, the true identity of the Respondent is unknown because the evidence indicates that the Respondent deliberately took steps to disguise its identity. Under these circumstances, the Panel considers that the Center discharged its responsibilities under the Policy and Rules to notify the Respondent of these proceedings, and provided it with adequate opportunity to respond.
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to 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
It is well established by previous panel decisions that the generic Top-Level Domain (“gTLD”) suffix in the disputed domain name (“.com”) can be disregarded for the purposes of assessing similarity or identicality.
The Complainant has provided evidence of numerous trade mark registrations for the word SCHINDLER. The Panel accordingly finds that the Complainant has established rights in the word mark, SCHINDLER.
The disputed domain name combines the Complainant’s trade mark, SCHINDLER with a prefix comprising a geographical abbreviation for the United Kingdom followed by a hyphen. The Schindler Group has a long established, trading operation based in the United Kingdom. The combination of Complainant’s well-known trade mark preceded by the abbreviation “uk” and a hyphen does not render the disputed domain name dissimilar to the Complainant’s trade mark. Rather, as the Complainant asserts, Internet users are likely to assume that e-mails which use the form of the disputed domain name are from the part of the Complainant’s business which deals with its affairs within the United Kingdom. The choice of the disputed domain name and correlating email address appears deliberately designed by the Respondent to misuse the high degree of similarity to the Schindler Group standard form for email addresses as described above.
The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. B. Rights or Legitimate Interests
The Policy sets out in paragraph 4(c) several means by which a respondent may demonstrate rights or legitimate interests, namely that;
(i) before any notice of the dispute, it can show 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) it can show that (as an individual, business, or other organisation) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is nothing within the evidence available for consideration that suggests any possibility that the Respondent might have a right or legitimate interest in the disputed domain name. The Respondent has failed to reply to any correspondence from the Complainant or to respond to this Complaint and has thereby declined to take the opportunities available to assert a right or legitimate interest in the disputed domain name. The sole known use by the Respondent of the disputed domain name has been to assist it in masquerading as an employee of the Schindler Group in order to seek confidential and commercially sensitive information from it. Such use does not establish or point towards any rights or legitimate interests on the part of the Respondent
The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, in particular but without limitation, be evidence of the registration and use of a domain name in bad faith by a registrant. Paragraph 4(b) (iv) provides that use of the domain name, to intentionally attempt to attract, for commercial gain, Internet users to a 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 the respondent’s web site or location or of a product or service on it.
There is no website to which the disputed domain name points. However, the evidence submitted by the Complainant indicates that the Respondent has registered and used in the disputed domain name in a broadly analogous manner namely for the express purpose of impersonating a senior employee of the Schindler Group and thereby attempting to deceive employees of the Schindler Group into providing confidential and sensitive commercial information to it. The Panel finds that whilst the Respondent’s conduct does not fit precisely within any of the non-exhaustive examples of bad faith set out at paragraph 4(b) of the Policy, the evidence of its dishonest conduct falls within the normally understood meaning of “bad faith” and that the Respondent both registered and has used the disputed domain name 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 name, be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: March 23, 2016
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