The Complainant is Inventio AG, Switzerland, internally represented.
The Respondent is Domain Administrator, Domain is for Sale at www.dan.com ----, Cayman Islands, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 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 August 13, 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 August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 27, 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 BackgroundThe Complainant is a Swiss company that is a subsidiary and intellectual property holding company of Schindler Holding AG. Schindler Holding AG operates (through various subsidiaries) a business, established in 1874, involving the supply of elevators and escalators and services related to elevators and escalators.
The Complainant is the owner of trade mark registrations for a mark consisting of the word “Schindler” (the “SCHINDLER Mark”) including International Registration (“IR”) number 1265628 registered on May 1, 2015 with a priority date of December 2, 2014. On January 25, 2021, the Complainant applied to register a trade mark containing of the words “Schindler Colab” (“SCHINDLER COLAB Mark”) being IR number 1603813, which was registered on March 10, 2021.
The Domain Name
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SCHINDLER and SCHINDLER COLAB Marks;
(ii) that the Respondent has no rights or any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SCHINDLER and SCHINDLER COLAB Marks, having registered and used the SCHINDLER and SCHINDLER COLAB Marks in Switzerland and other jurisdictions. The Domain Name is identical or confusingly similar to the SCHINDLER and SCHINDLER COLAB Marks since it wholly incorporates the SCHINDLER COLAB Mark and adds the word “colab”, to the SCHINDLER Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is simply offering the Domain Name for sale for USD 990 without any other use. Such use of the Domain Name cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Domain Name and therefore Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy.
The Domain Name has been registered and is being used in bad faith. The only possible motive held by the Respondent in registering the Domain Name is for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name. In the present case, the Respondent’s Website indicates that the Domain Name is for sale for USD 900 although it was registered by the Respondent days after the Complainant applied to register the SCHINDLER COLAB Mark, which shows that the Respondent’s primary intention was to sell it for valuable consideration, and not to use it for a real and proper website. Furthermore, the fact that the Domain Name was registered shortly after the Complainant applied for the SCHINDLER COLAB Mark, and the Complainant’s announcement of its Schindler Colab platform during the presentation of its business results 2020 indicates that that the registration of the Domain Name was made in awareness of the Complainant and its activities.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SCHINDLER COLAB Mark, holding an IR for the SCHINDLER COLAB Mark with a base registration in Switzerland and designating various jurisdictions including Canada, the United Kingdom and the United States. The Domain Name wholly incorporates the SCHINDLER COLAB Mark along with the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any domain name.
The Panel finds that the Domain Name is identical to the Complainant’s SCHINDLER COLAB Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SCHINDLER COLAB Mark or a mark similar to the SCHINDLER COLAB Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods or services; the use of the Domain Name for a page advertising itself as being for sale, does not, in the absence of other evidence, amount to use for a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the SCHINDLER and SCHINDLER COLAB Marks at the time the Domain Name was registered. It is implausible that a party would register a domain name that is identical to the SCHINDLER COLAB Mark, which has no descriptive meaning, (less than two months after the Complainant applied to register the SCHINDLER COLAB Mark), and then advertise the Domain Name for sale unless it had an awareness of the reputation of the Complainant and its SCHINDLER and SCHINDLER COLAB Marks. The registration of the Domain Name in awareness of the SCHINDLER and SCHINDLER COLAB Marks and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
At some point, either immediately after or shortly after the Domain Name was registered, the Respondent placed an advertisement on the Respondent’s Website indicating that the Domain Name was for sale for USD 990. The presence of an advertisement indicating that the Domain Name was for sale within a few months of the registration of the Domain Name, along with the lack of any evidence supporting any other explanations as to the possible (legitimate) use of the Domain Name leads the Panel to conclude that the Respondent registered the Domain Name primarily for the purpose of selling it for an amount in excess of its out-of-pocket costs. Pursuant to 4(b)(i) of the Policy the Respondent has registered and used the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Nicholas Smith
Sole Panelist
Date: November 9, 2021