WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB v. J. Shera
Case No. D2001-0704
1. The Parties
The Complainant is Scania CV AB , a Swedish corporation with its principal place of business in Södertälje, Sweden, represented by Joanna Lundquist, Domain Network Stockholm AB, Stockholm, Sweden.
The Respondent is J. Shera, an individual who resides in Bradford, U.K.
2. Domain Name and Registrar
The domain name at issue (Domain Name) is: <scaniaengineparts.com>.
The registrar is Bulkregister.com, Baltimore, Maryland USA.
3. Procedural History and Jurisdiction
The WIPO Arbitration and Mediation Center (the Center) received Complainant's complaint on May 27, 2001 (electronic copy) and May 29, 2001 (hard copy). At the Center's request the Complainant amended its complaint, with the amendment received by the Center on June 18, 2001 (email) and June 20, 2001 (hard copy). The Center verified that the amended complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 20, 2001.
On May 29, 2001, the Center transmitted via email to Bulkregister.com. a request for registrar verification in connection with this case. On May 30, 2001, Bulkregister.com transmitted via email to the Center its Verification Response, confirming that the Respondent J. Shera is the registrant, and Lee Gillett, Gillett Multimedia, Ely, Cambridgeshire, U.K. is the administrative and technical contact.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on June 20, 2001, the Center transmitted to the Respondent and the Administrative/Technical Contact a Notification of Complaint and Commencement of the Administrative Proceeding via post/courier, facsimile, and e-mail. The postal address used for Respondent was as follows, J. Shera, 40 Verity Street, Bradford BD4 6PN, U.K.
Notice was also sent by email, facsimile, and post/courier to an address obtained at the website utilising the Domain Name, Bradford Grinders (UK), Mount Street, Bradford, England, BD3 9SN, U.K.
Bradford Grinders notified the Center by letter that Mr. Jonathan Chera was no longer employed by it, and that it had nothing to do with the Domain Name.
Respondent failed to respond to the Notification of Complaint and Commencement of the Administrative Proceeding and the Center notified him of his default on July 10, 2001, via email.
In view of the Complainant's designation of a single panelist and Respondent's default the Center invited Mr. Richard G. Lyon to serve as a panelist.
Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel on July 20, 2001. The Projected Decision Date was August 3, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules, and that the panel has jurisdiction over this dispute.
The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules, and Supplemental Rules.
4. Factual Background
Complainant is an internationally known Swedish company. Among its businesses is the sale of commercial motor vehicles such as trucks and buses, and parts and service for those vehicles. Complainant owns numerous trademarks for SCANIA, which in the United Kingdom (where Respondent resides) is registered in Classes 12 (for "commercial vehicles, motor trucks and buses,. . ."), 7 ("parts and fittings for vehicles; engines and motors, . . . "), and 37 (repair and maintenance of commercial vehicles; motor trucks and buses . . ."). The SCANIA name and mark are well known around the world in these lines of commerce, in which Complainant has engaged for more than a century. Complainant and affiliated companies or authorized representatives do business in more than one hundred countries. It has authorized workshops and dealers in many countries, including the United Kingdom. It also has registered many domain names that include the word scania.
Respondent registered the Domain Name on May 17, 2000. An Internet user who enters the Domain Name site is transferred automatically to a website promoting Bradford Grinders (UK) Ltd. This site is headed "All Types of Engine Spares" and describes a company in the business of providing spare parts for "a full range of petrol and diesel engines." Bradford Grinders lists the address given above and includes a U.K. freephone number and website (www.bradfordgrinders.co.uk). Neither Bradford Grinders nor Respondent is an authorized representative or dealer of Complainant or any of Complainant's British dealers.
Complainant's counsel sent Respondent cease and desist letters on March 8 and 23, 2001. Respondent has not replied to either letter.
5. Parties' Contentions
The Complainant's contentions may be summarized as follows:
The Domain Name is confusingly similar or nearly identical to its name and SCANIA marks. Respondent has no rights or legitimate interests in respect to the Domain Name. Respondent's use of the Domain Name has disrupted the business of Complainant's authorized U.K. representatives and prevented the trademark owner from using its mark in a domain name. Bad faith is also shown by Respondent's registration of domain names that similarly incorporate other vehicle manufacturers' trade names, such as <volvoengineparts.com> and <mercedesengineparts.com> (Footnote 1).
Respondent has failed to reply to the complaint.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and
(iii) Respondent's Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each of these elements. Respondent's default does not automatically result in judgment for the Complainant.
Identity and Confusion.
The Domain Name incorporates verbatim the Complainant's name and mark, making confusion likely. The addition of the engineparts – one of Complainant's principal lines of business -- to the trademark only adds to the likelihood of confusion.
Complainant has not licensed Respondent to use its marks. Neither Respondent nor his former employer is an authorized Scania dealer. Nothing in the record suggests that Respondent has any legitimate interest in the Domain Name.
Paragraph 4(b) of the Policy sets out examples that shall be evidence of the registration and use of a domain name in bad faith. Section 4(b)(iv) of the Policy provides that the following will be evidence of bad faith:
"by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or of a product or service on your web site or location."
Respondent’s web site automatically transfers a user to a site owned by a dealer in vehicle parts and thus presumably a competitor of Complainant's U. K. dealers. Respondent at one time was employed by this company. A customer seeking an authorized Scania dealer would be very likely to use the domain name and be directed to a competitor. It is difficult to image that Respondent intended anything other than this result. His use as metatags of comparable combinations incorporating other vehicle manufacturers' names is further evidence of this. Respondent has offered no proof to the contrary. Complainant has established registration and use of the Domain Name in bad faith.
For the foregoing reasons the Panel determines that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy in relation to the Domain Name.
Pursuant to request by Complainant, paragraph 4(i) of the Policy, and paragraph 15 of the Rules, the Panel orders that the registration of the Domain Name be transferred to the Complainant.
Richard G. Lyon
Dated: July 28, 2001
1. Complainant submits no evidence to support this assertion. The metatags listed at the Bradford Grinders website, to which a user is referred upon entering the Domain Name (see above), however, contain these phrases. (back to text)