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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Scania CV AB (Publ) v. Stian Haverstad

Case No. D2005-1339

 

1. The Parties

The Complainant is Scania CV AB (Publ), Corporate Relations, Sцdertдlje, Sweden, represented by Konsultbyrеn fцr Marknadsrдtt, Sweden.

The Respondent is Stian Haverstad, Sor-Fron, Norway.

 

2. The Domain Name and Registrar

The disputed domain name <norskscania.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2005. On December 28, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On December 28, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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, billing, 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 January 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2006.

The Center appointed Knud Wallberg as the sole panelist in this matter on February 14, 2006. 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

Scania CV AB (Publ) is a Swedish joint stock company founded in 1891, and registered as a Swedish company in 1962.

The Complainant is a manufacturer of heavy trucks and buses as well as industrial and marine engines. The Complainant also markets and sells a broad range of service-related products and financing services.

Scania is a global company with operations in more than 100 countries in Europe, Latin America, Asia, Africa and Australia, operations are based in more than 100 countries.

The Complainant has registered the trademark SCANIA as a word mark in respect of heavy vehicles and engines in several classes in more than 150 countries, including in Norway. The Complainant has also registered the trademark in over 150 different domain names under various top-level domains.

The trademark SCANIA has, due to extensive and long-term use on products and services of the Complainant, acquired status as a well-known trademark within the heavy vehicles industry. This has been confirmed in several previous WIPO UDRP decisions.

 

5. Parties’ Contentions

A. Complainant

The Complainant first became aware of the Respondent’s registration in October 2005. A print out of the website shows that “www.norskscania.com” tries to give the impression that the site or company is a retail dealer or in some other way connected to Scania - both by the use of the domain name <norskscania.com> and the use of Scanias logotype – combined with a picture of a Scania truck on the website. Scania is however not in anyway related with “www.norskscania.com”. The use of the domain name and logotype is therefore both unauthorized and a serious trademark and domain name infringement.

The Respondent has obviously and intentionally chosen a domain name based on the well-known brand to claim under false pretences that the website is related to Scania.

A cease and desist letter was sent on November 17, 2005, by postal mail and via email to the administrative contact. The Complainant advised the Respondent that the unauthorized use of the SCANIA trademark within the domain name <norskscania.com> violated the rights in the trademark SCANIA owned by the Complainant. The Complainant requested immediate transfer of the domain name and offered to pay expenses for such transfer. A 7 day deadline for reply was given.

The Complainant has not received any reply from the Respondent.

The Complainant did therefore initiate preparations for a complaint under the Policy at WIPO.

A.1 The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The dominant part of the domain name <norskscania.com> comprises the word “Scania”, which is identical to the registered trademark SCANIA. The registered trademarks upon which the Complaint is based are for SCANIA as a word mark in respect of heavy vehicles and engines and additional classes in more than 150 countries, including Norway.

The domain name <norskscania.com> is confusingly similar to the trademark SCANIA in which the Complainant has rights. Additionally Norsk Scania AS is a subsidiary company owned by Scania CV AB and registered in Norway.

The addition of “norsk” therefore gives the impression that the domain name represents a national retailer in Norway. Accordingly the addition gives this impression in relation to the name Scania and is therefore confusingly similar to the trademark. The Respondent therefore takes advantage of the Complainant’s well-known trademark.

The domain name registered by the Respondent, <norskscania.com> is identical and confusingly similar to the Complainant’s registered trademark SCANIA to which a generic top-level domain name “.com” and a geographically descriptive term for services, “norsk” (which means Norwegian both in Swedish and in Norwegian) have been added. It has previously been held in very many other proceedings before UDRP panelists that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusing similar to the trademark.

Anyone who sees the domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark SCANIA there is a considerable risk that the trade public will perceive the Respondent’s domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risks being tarnished if it is connected to the website. By using Scania as a part of the actual domain name, the Respondent exploits the goodwill and the image of Scania, which may result in dilution and other damage for the Complainant’s trademark.

To summarize, the Complainant is the owner of the well known trademark SCANIA. The domain name in question is confusingly similar to the registered trademark SCANIA owned by the Complainant. The addition of the geographic reference “norsk” does not have any impact on the overall impression of the dominant portion of the name, Scania and is therefore irrelevant in determining the confusing similarity of the trademark. The domain name must therefore be considered to be confusingly similar with the trademark SCANIA.

A.2 The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The domain name was registered on October 4, 2005. This date is subsequent to when the Complainant registered the trademark SCANIA.

There is no connection or co-operation between the Complainant and the Respondent. The Complainant has neither licensed, nor otherwise authorized the Respondent to use the trademark SCANIA in the domain name or in any other procedure.

The Complainant has made searches in relevant trademark databases and has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name. The Complainant has also investigated if the Respondent has any kind of business registered or in use under the name “norskscania”. The Complainant has not found any indication of this. The conclusion is therefore that the Respondent has no registered rights or rights arising out of use, to the name “norskscania”.

The Respondent is also using the domain name in connection with offerings of goods and services. The Respondent is currently using the domain name <norskscania.com> in order to generate business by giving the impression of being related to Scania.

The Complainant believes that the Respondent is taking unfair commercial advantage of the goodwill associated with the trademark. The Respondent is also misleading and diverting consumers that search for the Complainant’s trademark on the Internet.

In this case the Respondent is using the trademark SCANIA for generating business by misleading the potential visitor to believe that the Respondent is authorized by and associated to Scania. This behavior and procedure by the Respondent cannot be considered to be a legitimate interest.

Also, the Complainant’s sent cease and desist letter has never been answered. This indicates that the Respondent has no intention to solve the matter in good faith has no legitimate right or legitimate interest in the domain name.

To summarize, the Respondent is not a representative or licensee of the Complainant and therefore no permission has been given to use the trademark SCANIA in the domain name, or as a trademark on the website. The Respondent has no registered rights, or rights arising out of use, in the name “norskscania”. The Respondent cannot claim legitimate interest just by registering and using the trademark as a domain name. The domain name was registered on October 4, 2005, which is subsequent to when the Complainant registered the trademark SCANIA in most countries of the world. The Respondent has intentionally chosen a domain name based on a well-known brand to mislead the visitor to believe that the Respondent is associated with Scania. There is further no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. Any legitimate interest can accordingly not be at hand.

A.3 The domain name was registered and is being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances in which: “by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent is obviously not unaware of the Complainant’s well-known trademark SCANIA which has been well-known throughout the world by virtue of the Complainant’s long, exclusive and ubiquitous use of it. Additionally the Scania logotype is found on the website along with pictures of Scania trucks.

By creating the likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website the Respondent has: “capitalized on Complainant’s marks as well as reputation by registering and using confusingly similar domain names. According to Policy paragraph 4(b)(iv), evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another’s well known reputation by attracting Internet users to the registrant’s website, for commercial gain.” Dollar Rent A Car Systems Inc v. Patrick Ory (NAF Case No. FA0209000125229). The decision in GA Modefine SA v. AES Optics, WIPO Case No. D2000-0306 further stated that bad faith may be presumed in the registration and use of a domain name consisting wholly or partly of the famous trademark of a third party. The domain name was therefore registered and is being used in bad faith.

The Complainant has continuously used the trademark SCANIA since 1891. The Complainant submits that because the trademark is used in over 150 countries it is fair to say that the trademark is well-known within the heavy trucks and buses area. That the trademark SCANIA is well-known has also been confirmed in earlier decisions in Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169, page 3, “The Panel accepts that SCANIA is a well known mark in the motor industry”. The trademark SCANIA is well-known in the very same area in which the Respondent is actively using the disputed domain names for commercial gain.

The domain name has also been registered several years after the Complainant started using and registered the trademark SCANIA. It goes without saying that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name since he uses it for a commercial website within heavy trucks and buses area.

There can be no doubt that the trademark SCANIA is such a well-known name and so obviously connected with the Complainant and its services that its very use by someone with no connection to the Complainant suggests “opportunistic bad faith”.

The Complainant submits that the Respondent is using the disputed domain names for his commercial activities with the intention of attracting financial gain or alternatively disrupting the business of the Complainant. The Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

The Respondent has without any authorization registered a well-known trademark as part of a domain name. The Respondent is using the disputed domain name for his commercial activities with the intention of attracting financial gain or alternatively disrupting the business of the Complainant. The Respondent has no logical connection to the trademark SCANIA, neither as a registered trademark nor as a registered trade name. The Respondent also uses the domain name that is identical to Norsk Scania AS that is a subsidiary company owned by Scania CV AB and registered in Norway. The domain name <norskscania.com> must be considered to have been registered and being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no legitimate interests in respects of the domain name; and

(3) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The contested domain name contains the Complainant’s trademark SCANIA in full, with the addition of the descriptive prefix “norsk” (“Norwegian”) and the addition of the “.com” designation. For the purpose of these proceedings the domain name must be considered confusingly similar to the Complainant’s trademark, which is registered also in Norway.

The prerequisites in the Policy, paragraph 4(a)(i) are therefore fulfilled.

B. Rights or Legitimate Interests

According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.

On the website “www.norskscania.com” the Respondent seems to offer new and used Scania trucks as well as trucks of other brands just as he offers services connected to these trucks. However, in view of this Panel it is a common principle of trademark law that an agent or reseller that is engaged in legitimate sale and distribution of trademarked goods does not have any rights to register the said trademark as a trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of art 6 septies of the Paris Convention. Even if Respondent is engaged in legitimate albeit not authorized sales of the Complainant’s products and services related hereto, and thus may have a legitimate interest in and rights to use the trademark for promoting these goods and services, this does not establish such rights or legitimate interests for the purpose of these proceedings that may legitimize registration of the contested domain name.

The Panel has reviewed quite a number of WIPO UDRP decisions on this issue, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, such as Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903, Experian Information Solutions, Inc. v. Clarence Mortensen, WIPO Case No. D2002-0095, Motorola, Inc. v. NewGate Internet, WIPO Case No. D2000-0079, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The Panel would like to note that even if it were to endorse the view expressed in e.g. the Oki Data decision, the Oki Data test would not be applicable in the present matter since the Respondent is not selling, competing products to the Complainant’s products on the website associated with the domain name.

Respondent’s registration and use of the contested domain name does thus not fall under any normative fair use doctrine, and consequently the prerequisites in the Policy, paragraph 4(a)(ii), cf. 4(c) are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Respondent must have registered and used the domain name in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.

The Complainant’s trademark SCANIA must be considered to be well known also in Norway. It is also apparent that Respondent was fully aware of the Complainant and the Complainant’s rights to the mark when he registered the domain name and that the domain name is actively used.

The Panel therefore finds that the Respondent by registering and using the domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.

Bearing these facts and the facts mentioned above under 6A and 6B in mind, the Panel finds that the domain name has been registered and is being used in bad faith, cf. paragraph 4(a)iii and 4(b).

Consequently, all the prerequisites for cancellation or transfer of the domain name according to paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

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, <norskscania.com> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: February 23, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1339.html

 

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