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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Scania CV AB (Publ) v. ScaniaFinance.co.uk

Case No. D2008-0113

 

1. The Parties

The Complainant is Scania CV AB (Publ) of Sцdertдlje, Sweden, represented by Melbourne IT CBS of Stockholm, Sweden.

The Respondent is ScaniaFinance.co.uk of Pickering, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <scaniafinance.com> is registered with Melbourne IT Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2008. On January 28, 2008, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the domain name at issue. On January 29, 2008, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Respondent did not submit any response within the time limit set by the Center. Accordingly, the Center notified the Respondent’s default on February 22, 2008.

The Center received e-mail communications from the Respondent on February 28, 2008.

The Center appointed Torsten Bettinger as the sole panelist in this matter on February 29, 2008. 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

The Complainant is Scania CV AB (Publ), a Swedish joint stock company which was founded in 1891 and registered as a Swedish company in 1962 and is today one of the world leading manufacturers of heavy trucks and buses as well as industrial and marine engines with operations in more than 100 countries in Europe, Latin America, Asia, Africa and Australia. The Complainant also markets and sells a broad range of service-related products and provides financial services through its UK based finance-provider Scania Finance Great Britain Ltd.

The Complainant is the registered owner of numerous trademarks worldwide, inter alia Community trademark No. 002896215 “SCANIA” covering financial services in international class 36.

The disputed domain name was first registered on July 14, 2004 and is being used in connection with a website offering comprehensive and flexible range of products, inter alia hire purchase, lease purchase, finance lease, operational lease and fixed and variable agreements in connection with the purchase of Scania vehicles or any other commercial vehicles or trailers.

The website available at the disputed domain name contains a disclaimer at the bottom of the website stating that “ScaniaFinance.com is in no way associated to or part of either Scania (Great Britain) Limited or Scania Finance Great Britain Limited. Both ScaniaFinance.co.uk & ScaniaFinance.com are part of Commercial & Equipment Finance (2003)”.

The Complainant sent a cease and desist letter to the Respondent on April 12, 2007 requesting that the Respondent ceases to exploit the Complainant’s trademark and to transfer the domain name against compensation for the expenses directly related to the registration and renewal of the domain name. In its reply, the Respondent stated that it does not agree to the transfer.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the trademark SCANIA in which the Complainant has exclusive rights as it fully includes the trademark SCANIA and the additional term FINANCE, which merely describes a field of the Complainant’s business.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that

- the Respondent is not commonly known under the disputed domain name or a name corresponding to the domain name;

- the Respondent has no license or authorization of any kind to use the trademark SCANIA;

- the Respondent is not known as an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant;

- the Respondent is using the domain name for commercially promoting services not related to the Complainant. Such use is neither a bona fide offering of goods and services nor a legitimate non-commercial or fair use.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that

- the Respondent must have been aware of the Complainant’s rights in the name SCANIA when it registered the disputed domain name because of the longstanding use of the Complainant’s trademarks and the fact that the Complainant’s trademark enjoys sound reputation and is to be considered well-known;

- by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, of the website or of a product or service on the website. The fact that there is a disclaimer on the website does not defer from the fact that the Respondent is misleading consumers that are looking for the Complainant.

B. Respondent

- The Respondent did not reply to the Complainant’s contentions within the time limit set by the Center. In its belated Response, the Respondent states that

- it is doing business in the field of providing financial services to any business that Scania Finance (GB) Limited could not handle or agree, i.e. new start businesses, customers with adverse information and unusual financing profiles;

- it assists in the sale of vehicles and that the vast majority (around 80%) of commercial vehicles it assisted in the funding have been Scania’s;

- it has acquired the disputed domain name on February 28, 2006 for its business activities;

- the domain name purchase was open to all parties and the Complainant had every opportunity to purchase the domain name, but either decided not to, or was not aware of its availability;

- the website under the disputed domain name has a clear and precise message that states that the Respondent is no part of Scania;

- the Complainant is quite welcome to place an appropriate offer to purchase the domain name.

 

6. Discussion and Findings

A. Procedural Aspects

The Respondent did not file its response within the time limit set by the Center but about one week later. Absent exceptional circumstances, the Respondent’s failure to timely submit its Response constitutes default according to paragraph 14(a) of the Rules.

The Panel did not request any further statements or documents from either of the parties; specifically, the Panel did not request the Respondent’s belated Response.

However, paragraph 10(a) of the Rules gives the Panel broad discretion to conduct this proceeding and paragraph 10(b) of the Rules also obligates the Panel to give each party “a fair opportunity to present its case”. At the same time, the Panel must ensure that this proceeding take place “with due expedition”, and extensions of time are to be granted only “in exceptional cases” according to paragraph 10(c) of the Rules.

Given the fact that the belated Response was filed with the Center before the notification of appointment of the administrative panel and therefore causes no delay in the proceedings the Panel elected to accept the Respondent’s belated Response.

B. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The disputed domain name wholly incorporates the Complainant’s trademark SCANIA, which is used in connection with motor vehicles and related goods and services for decades and is a well-known trademark in the motor industry (see Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585). The fact that the word “finance” is added to the Complainant’s trademark does not eliminate the similarity between the Complainant’s trademark and the disputed domain name, as it merely describes a field of the Complainant’s business and therefore is not sufficient to eliminate the confusing similarity between the domain name and the trademark SCANIA.

It is well-established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <scaniafinance.com> is confusingly similar to the SCANIA mark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The case before the Panel raises the question whether an unauthorized third party has a legitimate interest to use a trademark with the addition of descriptive elements as domain name.

Paragraph 4(c)(i) of the Policy provides that a use of a domain name is legitimate if, prior to commencement of the dispute, the respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

The Panel is aware that there are different views as regards the question of the conditions under which authorized or non-authorized third parties have a legitimate interest to use a trademark as domain name in identical form or with the addition of descriptive elements.

In the majority view, first put forward in the case of Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001–0903, the use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels (see Ferrari S.P.A., Fila Sport S.P.A. v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent (see Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).

This Panel follows the majority view put forward in the Oki Data case that a third party can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements. The Panel also holds the view that the Oki Data criteria are appropriate to be applied in cases, as the present case, where there is no contractual relationship between the complainant and the respondent.

However, in the case before the Panel, the Respondent’s conduct does not meet all the Oki Data criteria.

It is undeniable that the Respondent was aware of the Complainant’s mark prior to the acquisition of the disputed domain names and the establishment of the Respondent’s website. This fact alone, however, according to the Oki Data criteria, is not determinative on the issue, whether the Respondent uses the domain names in connection with a bona fide offering of goods or services.

However, the Respondent itself stated that it is doing business in the field of providing financial services to customers to assist in the sales of vehicles and that he is providing such services not only to the purchasers of the Complainant’s products but also to those trying to finance a product from the Complainant’s direct competitors. Therefore, the Respondent’s use of the disputed domain name does not comply with the Oki data criteria.

Finally, the Respondent is neither commonly known by the domain name nor is making a legitimate non-commercial or fair use of the domain name.

The Panel therefore finds that Respondent has no rights or legitimate interest in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

D. Registered and Used in Bad Faith

The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.

The domain name is a combination of the words SCANIA and FINANCE. The Respondent itself has explained that it is doing business in the field of funding the Complainant’s products and that the disputed domain name was registered in connection with such business. Therefore, the Panel is convinced that the Respondent had positive knowledge of the Complainant and its trademark SCANIA when acquiring the disputed domain name.

Furthermore, the domain name is also being used in bad faith. Screen shots of the Respondent’s web page at <scaniafinance.com> show that the domain name is used to promote the Respondent’s financial services in connection with the Complainant’s products as well as such of the Complainant’s competitors.

This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.

The existence of a disclaimer on the Respondent’s website cannot cure the finding of bad faith when bad faith has been established by other factors (See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Estйe Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic; WIPO Case No. D2000-1698; Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224).

The Panel therefore concludes that Respondent registered and is using the domain name <scaniafinance.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

 

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 <scaniafinance.com> be transferred to the Complainant.

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Torsten Bettinger
Sole Panelist

Dated: March 14, 2008