Decision for dispute CAC-UDRP-108991

• International Registration No. 1265628 registered on May 1, 2015 and duly renewed for products and services included in classes 6, 7, 9, 37, 38, 42 and 45;
  
  
• UK Trademark Registration No. UK00002002660 filed on November 18, 1994, registered on December 29, 1995 and duly renewed for products and services included in classes 7, 9 and 37;
  
  
• International Registration No. 1633618 registered on August 10, 2021 for products and services included in classes 7 and 8;
  
  
• International Registration No. 883565 registered on January 13, 2006 for products and services included in classes 6, 7, 9, 16, 35, 37, 38, 42, 45; 
  
  
• US Trademark Registration No. 3692635 filed on January 13, 2006, registered on October 6, 2009 and duly renewed for products and services included in classes 6, 7, 9, 16, 35, 37, 38, 42 and 45.

The Complainant notes that the domain names in dispute are:

1) <schindlerelevatorcorporation.org>

2) <schindlerelevator.online>

Despite the fact that the registrar verification has revealed two different registrants for the two domain names in dispute, according to the Complainant, the available evidence indicates that (i) the disputed domain names are subject to common control by a single person or entity acting through multiple aliases, and (ii) the determination of the dispute in a single consolidated proceeding would be procedurally efficient and fair and equitable to the parties.

In particular, according to the Complainant, the disputed domain names share the following similarities: (i) the same look and feel (ii) same registration date for the names yetithailand.com; yeti-suomi.com; yeti-israel.com (iii) common naming pattern, consisting of the “YETI” trademark combined with a generic/geographic term, i.e., “thailand”, “-suomi”, “-israel”, and “cuppe”, which is composed by “cup”, i.e. one of the most sold items of YETI, and “pe”, i.e., the ccTLD of Peru.

Accordingly, it is the Complainant's view that the Panel could consolidate the claims relating to the disputed domain names in a single administrative proceeding.

In addition, the Complainant infers that the domain names in dispute are confusingly similar to the SCHINDLER trademark since they entirely include the Complainant's trademark combined with generic terms.

Furthermore, the Complainant informs that the domain names in dispute are not connected with nor authorized by the Complainant. In particular, the Complainant has never authorized or permitted the Respondents to use the mark SCHINDLER in their domain names. The Complainant also notes that the Respondents are not commonly known by any of the domain names in dispute. 

The Complainant also notes that, as evidenced by the screenshots provided at Annex 8, the disputed domain names resolved to websites displaying content that falsely suggested an association with the Complainant’s company. Such impersonation of the Complainant cannot constitute a bona fide offering of goods or services under the Policy and is incompatible with any legitimate interest in the disputed domain names.

The Complainant also assumes that the domain names in dispute were registered in bad faith.  In particular, it is the Complainant's view that, given the well‑established reputation of the SCHINDLER name, and the Respondent’s deliberate incorporation of the terms "elevator" and "corporation" into the disputed domain names, it is clear that the Respondent was aware of the Complainant’s trademark rights and intentionally targeted them at the time of registration.

In addition, in the Complainant's view, the non-use of the domain names can still constitute bad faith for purposes of the Policy in consideration of the characteristics of the case at hand.

Finally, the Complainant considers that the provision of incomplete and false information as well as the use of privacy shield at the time of registration of the disputed domain names, and the failure to respond to the Complainant’s communications intended to inform the Respondents of the ongoing abuses, are further factors that help to demonstrate the registration and use in bad faith of the disputed domain names.

According to Article 3(c) of Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the Complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain-name holder.

According to Article 10(e) of Rules a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

The Complainant requests to consolidate its claims against the registrants of the disputed domain names notwithstanding that the registrant details are different, on the grounds that the disputed domain names are subject to common control and that it is equitable and procedurally efficient to consolidate the proceedings.

Firstly, the Panel notes that the Complainant’s arguments in support of this request are entirely inappropriate, as they relate to a different case from the present one, in which the trademarks and domain names under consideration include the word "YETI" and not "SCHINDLER".

Having clarified the above, the Panel nevertheless considers it appropriate to assess all the elements of the present case and, in particular: (i) the characteristics of the domain names in question, (ii) the documents submitted by the Complainant and (iii) the Registrar Verification.

In the light of the above, and notwithstanding the clear existence of two different registrants (Respondents), the Panel considers that the disputed domain names are under the same common control. 

In previous cases similar to the one at hand the Panel has decided to order the consolidation (see, for example, CAC Case No. 107587) and the Panel therefore agrees to the Complainant’s request, even considering that, due to the circumstances of the present case, it is equitable and procedurally efficient to consolidate the proceedings.

Paragraph 4(a) of the Policy provides that to obtain the transfer of the domain name; the complainant must prove that each of the following elements is present:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

1) The Complainant has demonstrated rights through registration and use on the SCHINDLER trademark. The Panel finds that the disputed domain names are confusingly similar to the SCHINDLER trademark of the Complainant. Actually, both the disputed domain names include the SCHINDLER trademark with the addition of the word "ELEVATOR".  In one of the domain names in dispute the word "CORPORATION" is also added.  Now, said word is a generic and not distinctive term which, in the Panel’s view, carries no weight in the comparison between the Complainant’s trademark and the disputed domain names (see CAC Case No. 106182, CAC Case No. 107428, CAC Case No. 108572 and CAC Case No. 108655). Returning to the word "ELEVATOR" said term appears to be particularly generic in the case at hand in consideration of the Complainant’s activities (since the Complainant is an elevators manufacturer) and, therefore, it is not likely to alter in any way the impression of extreme similarity between the Complainant’s trademark and the disputed domain names (see CAC Case No. 106131 related to <schindler-elevator.online> and CAC Case No. 107859 related to <schindler-elevator.cfd).  In particular, the Panel finds that the mark SCHINDLER is perfectly recognizable within both the disputed domain names. The generic TLD (.org/.online) is a mere technical requirement which, as such, does not affect the confusing similarity between the signs and should be totally disregarded in the comparison between the Complainant's mark and the disputed domain names. The Complainant therefore succeeds on the first element of the Policy.

2) Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name.  Once such a prima facie case is made, the respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Panel finds that the Complainant’s submitted evidence and allegations are sufficient to establish a prima facie case of the Respondent’s lack of rights and legitimate interests in the disputed domain name, also considering the fact that the Respondent had the chance to justify the registration and use of the disputed domain name, but failed to do so. According to the information provided by the Complainant and not contested, the Respondent is not commonly known by the disputed domain name nor authorized to use the Complainant’s trademark SCHINDLER. For these reasons, the Panel takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name for the purpose of the second element of the Policy.

3) The disputed domain names were both registered on August 8, 2026, and therefore more than thirty years after the Complainant obtained its first registration for the SCHINDLER trademark.  It is also necessary to bear in mind that the Complainant has used the SCHINDLER trademark worldwide and so intensively that it is impossible to believe that Respondent had no knowledge of the Complainant's trademark rights at the time of registration of the disputed domain names.  The fact that these domain names include the word "ELEVATOR", which refers unequivocally and directly to the Complainant’s business, clearly indicates that the Respondent had the Complainant’s trademark and its sector of activity in mind when it proceeded to register the disputed domain names. The adoption of a well-known trademark into a domain name by someone with no apparent connection with the name suggests opportunistic bad faith (see The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Therefore, in the Panel's view, the disputed domain names <schindlerelevatorcorporation.org> and <schindlerelevator.online> have been registered in bad faith.  The Panel does not agree that the disputed domain names were used to impersonate the Complainant.  In fact, the Complainant’s allegations merely demonstrate that the disputed domain names were linked to webpages provided by the registrar HOSTINGER.  Anyway, the Panel finds that in this case the Respondent's use of the domain names in dispute (i.e. passive holding) is sufficient to demonstrate bad faith use, in particular because of the reputation of the Complainant's trademark and the fact that it is not possible to conceive of any plausible good faith use of such disputed domain names by anyone other than the Complainant (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent did not respond and in the absence of any evidence by the Respondent or a satisfactory and credible explanation of how the registration and use of the disputed domain names which incorporates the well-known SCHINDLER trademark have not been in bad faith, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. In addition, the Complainant insists that bad faith has to be considered also due to the Respondent's lack of reaction to the Complainant's attempts to contact the Respondent regarding the infringements referred to in these proceedings and in consideration of the fact that the Respondent has used a privacy shield to conceal its identity and has provided false information at the time of the registration of the disputed domain names. In this respect the Panel confirms that the use of a privacy shield and of false information in domain name registrations as well as the Respondent's failure to respond to the Complainant contentions and as a result to provide any evidence whatsoever of any good faith registration and use of the disputed domain names are additional indications of bad faith (see, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). Therefore, the Panel finds that the Complainant has also satisfied the third element of the Policy.