|Complainant||Otis Elevator Company|
|Date of Decision||24.09.2004|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Otis Elevator Company v. John Cordingley
Case No. D2004-0269
1. The Parties
The Complainant is Otis Elevator Company of Farmington, Connecticut, United States of America, represented by Thomas H. Osborn of Farmington, Connecticut, United States of America.
The Respondent is John Cordingley of Trawden, Colne, Lancashire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <0tis.com> is registered with Melbourne IT, trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on April12,2004. On April14,2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On April15,2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April20,2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May10,2004. At the Respondent’s request, an extension was granted by the Center until May18,2004. At Complainant’s request, the proceedings were subsequently suspended until August31,2004, in order to pursue settlement negotiations. At Complainant’s request, the proceedings were recommenced on September1,2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default to both the Respondent and his legal representative on September1,2004. The Respondent did not reply until September 6, 2004, when he indicated that he could not afford legal representation, but still wished to defend the Complaint. The Center informed him that any Response would now be considered to be late and that the Administrative Panel would have sole discretion in deciding whether to consider it. No formal Response was received from Respondent.
The Center appointed Alistair Payne as the sole panelist in this matter on September13,2004. 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. The Respondent and Complainant were both notified of the appointment of the sole panelist on September 13, 2004.
4. Factual Background
The Complainant’s company, Otis Elevator Company, was established in 1853 and has been trading under that name since that date. It had worldwide sales of over US$6.7 million in 2002. The Complainant is the largest elevator company in the world. Accordingly, its business and name are extremely well known worldwide.
The Complainant is the owner of over 757 registered trademarks for OTIS and variants in 167 countries. It has owned trademarks in the United States since 1925, and in the United Kingdom since 1922. These trademarks predate the registration of the Disputed Domain Name.
The Complainant has also registered a number of domain names, all of which resolve to the official Otis website. These domain names all utilise the name, “Otis,” either in part or as the whole of the domain name. The Complainant has registered <otis.com> in the United States.
The Respondent operates through a company called Blockseal Limited, which sells domain names. Most of these domain names include a number in the address, for example, <ferrar1.com>. The Respondent admits (in an e-mail to the Center of September 6, 2004) to owning domain names such as <j0rdan.com>.
The Respondent registered the Disputed Domain Name on January23,2004. The Disputed Domain Name resolves to a website called “www.doma1n.co.uk,” “The Domain Shop,” where various domain names can be purchased.
5. Parties’ Contentions
1. Identical or Confusingly Similar
The Complainant contends that the trademark OTIS is well known worldwide. In addition, the Complainant has registered <otis.com> as a domain name. The Complainant maintains that the Disputed Domain Name is confusingly similar to the Complainant’s trademark on the basis of the visual similarity between <otis.com> and <0tis.com>. The Complainant also contends that there have been instances of actual customer confusion and cites various emails which are included at Annexure 6 of the Complaint. In addition, the Complainant contends that customer confusion between the Disputed Domain Name and <otis.com> can result from the fact that the letter ‘o’ and the numeral ‘0’ are in adjacent locations on a standard keyboard. Finally, the Complainant contends that this visual similarity makes it and its customers susceptible to a spamming campaign on the basis that its customers or employees might mistake an e-mail from <0tis.com> as a bona fide e-mail from the Complainant.
2. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
∙ the Complainant has not agreed or consented to the use of its mark by the Respondent;
∙ the Respondent has not used the domain name in connection with a bona fide offering of goods or services, nor has the Respondent made any legitimate non-commercial or fair use of the domain name;
∙ the Respondent has registered the domain name with the intent to sell it. The Complainant contends that the Respondent has registered other domain names which are confusingly similar to prominent trademarks such as FERRARI and JAGUAR;
∙ the Complainant contends that, because its mark is both well known and extensively used throughout the world, it is inconceivable that the Respondent could have used the name without creating an impression of association with the Complainant;
∙ the Respondent is not commonly known by the domain name.
3. Registered and Used in Bad Faith
The Complainant contends that the Respondent has offered to sell it the domain name for a price in excess of the cost to register, and refers to an email from the Respondent offering to sell the domain name to the Complainant. The Complainant also contends that the Respondent is engaged in a pattern of buying famous domain names with the intention of selling them.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name) the Complainant must prove that each of the following three elements are present:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element of the Policy requires the Complainant to prove that (a) it has rights in a trademark or service mark, and (b) the Disputed Domain Name is identical to or confusingly similar to such a trademark or service mark.
It is clear that the Complainant has rights in the OTIS mark. It is the owner of over 757 registered trademarks for OTIS and variants in 167 countries. It has owned trademarks in the United States since 1925, and in the United Kingdom since 1922. These trademarks predate the registration of the Disputed Domain Name.
Although not identical, the Disputed Domain Name is confusingly similar to this mark. Otis and 0tis are visually similar. In addition, the Disputed Domain Name and the Complainant’s mark sound identical if, as would most likely be the case, the numeral “0” is pronounced as the letter “o.” Finally, the close proximity of ‘zero’ to the letter ‘O’ on a keyboard means that typing errors are likely which may result in the misspelling of <otis.com>. This is evidenced by the various emails which the Respondent has received in error and which are annexed to the Complaint.
The Panel finds that the Complainant has established this element of the Policy.
B. Rights or Legitimate Interests
In accordance with Paragraph 4(c), a respondent may demonstrate its rights or legitimate interest in the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not replied to the Complainant’s contentions and on the evidence there is nothing to suggest that any of the circumstances set out above apply in this case.
On the contrary, there is no evidence that the Respondent is using or intends to use the Complainant’s domain name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a site called “www.doma1n.co.uk,” “The Domain Shop” where various domain names, including domain names that are confusingly similar to well known marks, are available for sale. The Panel considers that this also tends to indicate this is a classic case of cybersquatting where the Respondent has not acquired the domain name for any legitimate purpose, but only for its own commercial gain (see General Motors Corporation v. Vette Owners, WIPO Case No. D2000-0595).
The Panel, therefore, finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of the domain name in bad faith.
The Respondent admits (in an e-mail to the Center of September 6, 2004) that he acquired a number of other domain names at the same time as the Disputed Domain Name. The Panel considers that this is at least indicative that the Respondent has been engaging in domain speculation and accordingly registered the Disputed Domain Name in bad faith.
The Complainant has, at Annexure 10 to its Complaint, provided evidence of the Respondent’s request to sell the Disputed Domain Name to it. In addition, the Complainant has cited evidence of the Respondent’s wish to have the Disputed Domain Name objectively appraised (Annexure 9 to the Complaint). In the Panel’s view these emails suggest that the Respondent acquired the Disputed Domain Name primarily for the purpose of selling the domain name registration to the Complainant at an inflated price in terms of paragraph 4(b)(i) of the Policy.
The Complainant has also provided evidence that the Respondent has registered various domain names that are similar to or correspond to other well known names. Further, the Disputed Domain Name links the user to a site that sells domain names that are similar to or correspond to other well known marks. The Panel considers that this indicates a clear pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. In the absence of any evidence to the contrary, the Panel finds that the Respondent’s intention in registering the Disputed Domain Name was to prevent the Complainant from reflecting its trademark in a corresponding name under paragraph 4(b)(ii) of the Policy.
Further, and as an independent ground, when a domain name comprised of an obviously famous mark, such as OTIS, is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February18,2000).
For these reasons, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith and the Complainant also succeeds under this element of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <0tis.com> be transferred to the Complainant.