WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scandic Hotels AB v. xc2
Case No. D2007-0810
1. The Parties
The Complainant is Scandic Hotels AB, Stockholm, Sweden, represented by Mannheimer Swartling Law Firm, Sweden.
The Respondent is xc2, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed Domain Name <scandik.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2007. On June 6, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On June 7, 2007, eNom 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 June 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2007.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on July 17, 2007. 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 a leading hotel chain in the Nordic countries with about 140 hotels in Belgium, Denmark, Estonia, Finland, Germany, Italy, Lithuania, the Netherlands, Norway and Sweden. According to the Complainant the hotel business has been running since 1963, and since 1984 under the trade mark SCANDIC.
The Complainant owns and holds the trade marks SCANDIC and SCANDIC HOTEL (word and device marks) which are protected by a large number of trade mark registrations (including several registrations of word marks) in a large number of countries, included but not limited to Belgium, Denmark, Egypt, Estonia, Finland, Germany, Italy, the Netherlands, Norway, Sweden, United Kingdom, Taiwan, Province of China and Thailand. Furthermore the Complainant also owns various European Community trade mark registrations for the word and device mark SCANDIC.
A Whois-search shows that the Domain Name was registered by the Respondent on December 4, 2002. The website linked to the Domain Name contains information about hotel bookings. The title on the website states: “Scandik.com find something interesting”. Furthermore, under “about us” the following text is shown:
“We empower individuals, organizations and businesses with our unique services. Diversification being our core strategy; we specialize in Business Opportunity, Helsinki, Finland, Sweden Hotel and an array of other services. Our mission is to provide quality resources.”
The website also contains sponsored links to several hotel booking sites in Sweden and the rest of the world. Via these booking sites various hotels can be booked, including competitors of the Complainant.
Moreover, the Panel established that a pop-up screen shows up when the website linked to the Domain Name is visited. In the pop-up additional search categories are shown, i.e. lawyers, game, online casinos, credit card, music download etc. The search categories subsequently provide a link to predetermined search results.
On March 8, 2007, the Complainant sent a cease and desist letter to the Respondent and urged the Respondent to transfer the Domain Name to the Complainant. The Respondent did not respond to the cease and desist letter.
The Panel ascertained that the Respondent has been involved in several domain name disputes in the past. In each dispute the Respondent has been ordered to transfer the domain name(s) it registered (i.e. ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811; Laramar Group, L.L.C. v. xc2, WIPO Case No. D2006-0617).
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant contends that the Domain Name is identical and confusingly similar to the Complainant’s trade marks.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name on the basis of the following arguments:
(i) The Respondent has no license or other consent from the Complainant to use the trade marks of the Complainant as a Domain Name;
(ii) The Respondent is not, and has not been, commonly known by the Domain Name;
(iii) The Respondent is making a commercial and unfair use of the Domain Name. The Respondent is misleadingly diverting consumers from the Complainant’s official website “www.scandic-hotels.com”, with the intent for commercial gain for the Respondent.
(iv) There is a substantial risk that the use of the Domain Name will lead customers away from the Complainant’s official website and thereby cause damage to the Complainant.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant’s trade marks are well-known and it should therefore be assumed the Respondent was aware of the Complainant and its business. The website under the Domain Name contains the trade marks SCANDIC and SCANDIC HOTELS and links on the website, placed under the heading “scandic hotel”, leads the Internet user to the official website of the Complainant. These links are also connected the TradeDoubler network. By using the Domain Name, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by using a domain name that is confusingly similar to the Complainant’s trade marks and thereby creating confusion with the Complainant’s mark. The Domain Name disrupts the Complainant’s business since customers are led away from the Complainant’s official website and the website contains hotel booking sites where the Internet user can book hotel rooms from several different hotel chains, including competitors of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a Response, the Panel shall in accordance with the Rules, paragraph 5(e) decide the dispute based upon the Complaint. Furthermore, the Panel must, under the Rules, paragraph 14(a) “Proceed to a decision on the Complaint.”
For the Complainant to succeed, it must show that the Respondent meets each of the criteria in the Policy, paragraph 4(a):
(i) Respondent’s Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) 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
The Domain Name <scandik.com> incorporates the undisputed trade mark SCANDIC almost in its entirety. The misspelled “k” does not render the disputed Domain Name significantly different from the Complainant’s SCANDIC trade marks. Furthermore, the Domain Name is phonetically and conceptually identical to the Complainants trade mark.
The use of the misspelled “k” evidently shows that the Respondent is typosquatting. The Panel notes that typosquatting causes, by definition, confusingly similarity to Complainant’s trademarks (“Respondent’s typo squatting, by its definition, renders the domain name confusingly similar to Complainant’s mark.”); See, Dow Jones & Co. v. Powerclick, Inc., WIPO Case No. D2000-1259 (holding that the deliberate introduction of errors or changes does not render Respondent’s domain name less confusingly similar to the core trademark held by the Complainant).
Therefore, under the Policy, paragraph 4(a)(i) the Panel finds the Domain Name is confusingly similar to the trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to or legitimate interests of the Respondent in a Domain Name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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 organizations) has been commonly known about the Domain Name, even though it has not acquired any trade mark 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 the divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is established in numerous panel decisions that the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests (i.e. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Before notice to the Respondent of the dispute, there is no evidence of its use, 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. To the contrary the Respondent is using the Domain Name solely to typo squat upon Complainant’s trade marks and reputation in order to trick browsers looking for Complainant’s web site into viewing unrelated advertisements or web sites.
The Respondent has also not been previously known under the disputed Domain Name. The Panel notes that the Respondent registered the Domain Name long after the numerous registrations of the trade mark SCANDIC of the Complainant.
The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Panel considers it likely that Respondent registered and is using the Domain Name to mislead visitors and to profit consequently for commercial gain from confused visitors looking for the web site of the Complainant.
The Panel finds that the Complainant has succeed in making out an initial prima facie case that the Respondent lacks rights or legitimate interests. As noted the Respondent did not reply to the Complainant’s contentions and consequently has failed to demonstrate that it has rights or legitimate interests in the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
By failing to file a Response, the Respondent has done nothing to contest the allegations of the Complainant that it has registered and is using the Domain Name in bad faith.
Policy, paragraph 4(b) sets out the ways in which the Complainant can show the Domain Name is registered and used in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess if you documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Respondent engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 its website or location or of a product or service on its website or location.
Based on the facts the registration and use of the Domain Name by Respondent in bad faith is evident.
The Respondent has registered and uses the Domain Name to benefit from misdirected traffic in search of information on the Complainant and its services, by creating a likelihood of confusion with the Complainant’s trade marks and the Domain Name to attract for commercial gain Internet users to the Domain Name. The Respondent has been ordered to transfer domain names for such conduct before. However, this has not restrained the Respondent in any way from continuing this conduct.
Further, the Respondent is using the Domain Name to wrongfully divert consumers looking for Complainant’s services on the Internet to its website, the Respondent most likely charges third parties a fee to advertise on its site. This use is not bona fide and evidences Respondent’s bad faith attempt to trade on Complainant’s famous trademarks. See, Marriott Int’l, Inc. v. Seocho, FA 0303000149187 (Nat’l. Arb. Forum April 28, 2003) (finding “Respondent[‘s] attempt to derive commercial benefit from [a] typographical error” to be evidence of bad faith use); Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (holding that Respondent’s use of typo in the domain name to attract Complainant’s consumers to his website for commercial gain was bad faith use). Moreover, it is well-settled that the practice of typo squatting, of itself, is evidence of the bad faith registration of a domain name. See, Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (Finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”).
Furthermore, the Complainant’s trade marks are widely known; since 1984, the Complainant is running its business under the trade mark SCANDIC and it should therefore be assumed the Respondent was probably aware of the Complainant and its business. In fact the Respondent is probably aware of the Complainant’s trade mark, since the website under the Domain Name contains the trade marks SCANDIC and SCANDIC HOTELS and links on the website, placed under the heading “scandic hotel”, leads the Internet user to the official website of the Complainant. This conduct evidently demonstrates the Respondent’s probable awareness of Complainant’s prior rights.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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, <scandik.com> be transferred to the Complainant.
Willem J. H. Leppink
Dated: July 31, 2007