INVENTIO AG v. Liu GuoFu
Claim Number: FA1301001482178
Complainant is INVENTIO AG (“Complainant”), Switzerland. Respondent is Liu GuoFu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schindlerlift.us>, registered with FAST DOMAIN INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2013; the National Arbitration Forum received a hardcopy of the Complainant on January 30, 2013.
On January 30, 2013, FAST DOMAIN INC. confirmed by e-mail to the National Arbitration Forum that the <schindlerlift.us> domain name is registered with FAST DOMAIN INC. and that Respondent is the current registrant of the name. FAST DOMAIN INC. has verified that Respondent is bound by the FAST DOMAIN INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 30, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
On March 5, 2013, Respondent submitted an untimely, noncompliant, one sentence email, which did not contest the allegations in the complaint.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain name.
Policy ¶ 4(a)(ii): Respondent’s lack of rights or legitimate interests in the domain name.
Policy ¶ 4(a)(iii): Respondent registered or used the domain name in bad faith.
B. Respondent
Respondent failed to submit a proper Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant argues that it owns the trademark registration for the SCHINDLER mark with the USPTO (Reg. No. 2,325,625 registered on Mar. 7, 2000), and the WIPO (Reg. No. 883,565 registered on Jan. 13, 2006). Previous panels have concluded that registrations with multiple trademark agencies establish a complainant’s rights in the mark, even if neither agency is located in the respondent’s country of operation. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore the Panel concludes that Complainant has rights in the SCHINDLER mark under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <schindlerlift.us> domain name incorporates the entire SCHINDLER mark with the addition of the term “lift.” Complainant argues that the term “lift” is descriptive of the type of business conducted by Complainant. The Panel also notes that the domain name features the country code top-level domain (“ccTLD”) “.us,” but the Panel concludes that this addition is irrelevant. See Lockheed Martin Corp. v. Roberson, FA 323762 (Nat. Arb. Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). The Panel agrees that the addition of the term “lift” does nothing to clear confusing similarity because the term is descriptive of the products and services rendered under the SCHINDLER mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Therefore the Panel agrees that the <schindlerlift.us> domain name is confusingly similar to the SCHINDLER mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that communications between Complainant and Respondent illustrates that Respondent has failed to show any rights to the SCHINDLER mark at all. The Panel notes that there is a series of correspondence in which Respondent appears to solicit Complainant to buy the domain name, while routinely upping the asking price. Previous panels have concluded that a respondent is not the owner or beneficiary of a trademark when there is absolutely no showing that the respondent does have rights in the mark. See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶ 4(c)(i)). The Panel finds the same is true here because Respondent has provided no evidence to find that it has rights in any mark, and the Panel therefore concludes that Respondent does not have rights in a mark identical to the <schindlerlift.us> domain name under Policy ¶ 4(c)(i).
Complainant argues that Respondent is not otherwise licensed or authorized to use the SCHINDLER trademark. Complainant contends that Respondent’s name does not correspond with the <schindlerlift.us> domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Liu GuoFU” as the registrant of the name. Previous panels have concluded that a respondent is not commonly known by a disputed domain name when there is nothing in the record to prove otherwise. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Therefore, the Panel agrees that Respondent is not known by the <schindlerlift.us> domain name under Policy ¶ 4(c)(iii).
Complainant next avers that Respondent has made neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Complainant declares that the domain name presently resolves to a website hosted by <hostmonster.com> that is not functional. Complainant maintains that there is no evidence to indicate that a website is being developed for this non-functional domain name. Previous panels have concluded that using a domain name to host a blank— or otherwise inactive— website cannot be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). The Panel agrees and finds that Respondent has not shown a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant contends that Respondent sought to sell this domain name for an amount in clear excess of Respondent’s out-of pocket expenses. Complainant states that Respondent had previously demanded $15,000.00 for other domain names containing the SCHINDLER mark, and now demands $20,000.00 for the disputed domain name. The Panel notes that a series of correspondence between the parties validates Complainant’s contentions that Respondent desires to sell domain names to Complainant. Previous panels have agreed that it is bad faith on behalf of a respondent to either register or use a domain name solely to resell that domain name in excess of out-of-pocket costs. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). The Panel agrees that the same is true here, and that Respondent’s decision to solicit the <schindlerlift.us> domain name to Complainant for $20,000.00 illustrates bad faith use or registration under Policy ¶ 4(b)(i).
Complainant next contends that Respondent is engaging in a pattern of bad faith registration in regards to Complainant. Complainant claims that Respondent acquired the <schindler-elevator.net>, <schindler-elevator.com>, and <shindlerlift.org> domain names at the same time it acquired the <schindlerlift.us> domain name. Complainant asserts that Respondent bought these domain names after it failed to secure $15,000.00 from Complainant for the sale of the <schindler-lift.com> domain name to Complainant. The Panel notes that WIPO has ordered all of the <schindler-lift.com>, <schindlerlift.net>, <schindler-elevator.net>, <schindler-elevator.com>, and <shindlerlift.org> domain names to be transferred from Respondent to Complainant. See Inventio AG v. Domains By Proxy, LLC, DomainsByProxy.com / Liu GuoFU, D2012-1944 (WIPO Nov. 26, 2012). Previous panels have concluded that a respondent’s bad faith use or registration can be established upon prior findings of bad faith registration under USDRP or UDRP proceedings. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel agrees the same is true here and it finds bad faith use or registration to be inferred from Respondent’s pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant finally argues that Respondent was fully aware of Complainant’s rights in the mark. Complainant bases Respondent’s knowledge upon the e-mail correspondence between Complainant and Respondent in which Complainant requests that Respondent purchase a domain name from Complainant that included the SCHINDLER mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering or using the disputed domain name because of Respondent’s plan to market and sell domain names featuring the SCHINDLER mark directly to Complainant, and the Panel finds that this actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <schindlerlift.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 7, 2013
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