The Complainant is Inventio AG of Hergiswil NW, Switzerland, internally represented.
The Respondent is Chen Ki of Singapore. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 29, 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 is a wholly owned subsidiary of Schindler Holding AG, the parent company of the Schindler Group of companies engaged in the business of elevators, escalators, moving walkways and related equipment.
It is the owner of hundreds of trademark registrations for SCHINDLER and SCHINDLER SLIM in over 150 countries (Annexes 17, 18 to the Complaint) amongst which:
- International Trademark Registration No. 1 265 628, registered on May 1, 2015 for SCHINDLER in international classes 6, 7, 9, 37, 38, 42 and 45; and
- International Trademark Registration No. 1 376 697, registered on July 26, 2017 for SCHINDLER SLIM in international classes 6, 7 and 37. This registration is based on the Swiss trademark application No. 56096/2017, filed on May 17, 2017 and granted on June 19, 2017 under No. 703743.
The disputed domain name is and was registered on May 23, 2017. The disputed domain name does not resolve to an active webpage. There is a “ is coming soon” sign on the page. 5. Parties’ Contentions A. Complainant
The Complainant asserts to be part of Schindler Group, originated in Lucerne, Switzerland in 1874 as a mechanical engineering workshop for the production of lifting equipment and machines of all types.
According to the Complainant its group counts today with approximately 60.000 employees in more than 100 countries, having had in 2017 a revenue of almost CHF 10.2 billion, placing it as one of the world’s biggest manufacturers of elevators, escalators and moving walkways.
As to the disputed domain name, the Complainant asserts that it is identical to the SCHINDLER SLIM trademark which incorporates the Complainant’s distinctive and well-known SCHINDLER trademark as well as SLIM which is an acronym for “Scaffold Less Installation Methodology”, therefore insufficient to exclude the similarity between the disputed domain name and the Complainant’s trademarks.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair way;
(ii) the Respondent has not been licensed or otherwise received the Complainant’s consent to the use of the trademarks SCHINDLER SLIM / SCHINDLER;
(iii) the disputed domain name was registered on May 23, 2017 thus six days after the Complainant had filed its Swiss trademark application for SCHINDLER SLIM of May 17, 2017 (Annex 20 to the Complaint);
(iv) the Respondent has not claimed any rights to or legitimate interests in the designation “schindler slim” or “schindler” in its reply of August 7, 2017 to the Complainant’s warning letter of July 26, 2017 to the Respondent (Annexes 6 and 7 to the Complaint) as well as the Respondent did not deny the Complainant’s allegation that the Respondent has registered the disputed domain name deliberately and so as to capitalize on the Complainant’s reputation (Annexes 8 and 9, communications between the parties on March 19, 2018 and March 21, 2018);
(v) the Respondent has previously registered domain names incorporating famous trademarks such as Disney, Fuji and Phonak (Annex 21 to the Complaint) and has been named Respondent in past WIPO UDRP decisions, e.g., Comerica Bank v. Chen Ki,WIPO Case No. D2017-0849; and Alstom v. Chen Ki.,WIPO Case No. D2017-1300.
Moreover, the Complainant contends that the registration of the disputed domain name was done clearly in bad faith given that SCHINDLER is well-known in the market and there can be no doubt that the Respondent was familiar therewith.
Furthermore, the circumstance and the time of registration of the disputed domain name (six days after the Complainant’s filing for the equivalent trademark) indicates that the Respondent saw an opportunity to exploit on the Complainant’s product / service by registering the disputed domain name, preventing the Complainant from obtaining the domain name corresponding to said trademark it had just recently applied for, as the Respondent had already done in the past (see, Comerica Bank v. Chen Ki,WIPO Case No. D2017-0849, where the Respondent registered the disputed domain name eight days after the complainant had filed for the respective trademark application).
In addition to that, the Complainant asserts that the Respondent engaged in a pattern of bad faith conduct, having registered other domain names incorporating famous trademarks (Annex 21 to the Complaint) and having offered the disputed domain name for EUR 1,200 (Annex 7 to the Complaint) (and later on for EUR 800 – Annex 9 to the Complaint) what clearly indicates, under the Complainant’s view, that the Respondent was aware of the Complainant’s trademark and only acquired the disputed domain name for the purposes of selling it for valuable consideration in excess of any out-of-pocket expenses.
Lastly, the Complainant asserts that there is no plausible good faith use of the disputed domain name and the Respondent’s non-use of the disputed domain name should also amount to a finding of bad faith under the doctrine of passive holding. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the SCHINDLER and SCHINDLER SLIM trademarks duly registered.
The Panel finds that the disputed domain name merely reproduces the Complainant’s well-known SCHINDLER trademark with the addition of the SLIM expression which is also incorporated in a couple of the Complainant’s trademark registrations.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant indeed states that the Respondent has not been licensed or otherwise received the Complainant’s consent to the use of the trademarks SCHINDLER SLIM / SCHINDLER.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Moreover, the Respondent has not claimed any rights to or legitimate interests in the disputed domain name nor has rebutted the Complainant’s allegation that it has registered the disputed domain name deliberately and so as to capitalize on the Complainant’s reputation in the communications exchanged between the parties prior to this procedure, having, on the contrary, offered the disputed domain name for EUR 1,200.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
In the present case, the Respondent appears to have engaged in a pattern of bad faith conduct, having previously registered domain names incorporating famous trademarks such as Disney, Fuji and Phonak (Annex 21 to the Complaint), having already been named respondent in past WIPO UDRP cases.
Similarly to what happened in this case, in Comerica Bank v. Chen Ki,WIPO Case No. D2017-0849, the Respondent registered the disputed domain name eight days after the complainant had filed for the respective trademark application corresponding to the domain name under dispute. Such timing and circumstances clearly indicate that the Respondent saw an opportunity to exploit on the Complainant’s trademark by registering the disputed domain name, preventing the Complainant from obtaining the domain name corresponding to said trademark it had just recently applied for, what cannot be considered good faith.
The following circumstances further corroborate the Panel’s finding of bad faith registration and use of the disputed domain name:
(i) the Complainant’s trademark is well-known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; and
(iii) the implausibility of any good faith use to which the disputed domain name may be put.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 14, 2018
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