The Complainant is Scania CV AB of Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Michael Montrief of Huntington Beach, California, United States of America.
The disputed domain names <scaniaforsale.com>, <scaniaforsale.net>, <scaniasforsale.com> and <scaniasforsale.net> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2009. On August 28, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On September 2, 2009 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” or “UDRP”), 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 September 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2009. The Respondent did not submit any response at that time. Accordingly, the Center notified the Respondent's default on September 28, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on September 3, 2009. 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 Complainant is the well known global manufacturer of heavy trucks and buses and owns trade mark registrations for the SCANIA word mark in several classes in many countries worldwide including in the United States of America under registration number 087 9387 and in the European Community under Community Trade Mark registration 2896215. The Complainant was founded in 1891 in Sweden and has traded as a registered Swedish company since 1962 with operations in more than 100 countries. The Complainant also owns and operates its website from the domain name <scania.com>.
The Respondent Mr Michael Montrief having an address for service in California in the United States of America registered <scaniaforsale.com>, <scaniasforsale.com>, <scaniaforsale.net> and <scaniasforsale.net> (“the Disputed Domain Names”) on May 24, 2009 and at the date of the Complaint they resolve to parking pages.
The Complainant submits that the dominant element of the Disputed Domain Names is the word “Scania” which is identical to its various registered trade marks which are well known around the world. It says that the Disputed Domain Names are confusingly similar to its SCANIA trade marks and that the addition of the suffix “for sale” does not distinguish the Disputed Domain Names in any way and is of no significance. In view of the renown of the SCANIA mark, the incorporation of the mark within each of the Disputed Domain Names and the irrelevance of the “for sale” suffix, the Disputed Domain Names are confusingly similar to the Complainants SCANIA trade marks.
The Respondent has no corresponding trade marks or domain names and does not appear to have been using SCANIA in a manner which would give it any rights or legitimate rights to the Disputed Domain Names. The Complainant has not authorised the Respondent's use and neither is the Respondent an authorised dealer in the Complainant's products nor has it ever had a business relationship with the Complainant.
In view of the fame and renown attaching to the Complainants SCANIA marks it is very unlikely that the Respondent did not know of the Complainant's marks and it is likely that this fame motivated it to register the Disputed Domain Names. As a famous mark any use of SCANIA in a domain name would violate the rights of the trade mark owner.
The Respondent is not using the Disputed Domain names in relation to bona fide goods and services but has intentionally chosen the domain names based on registered trade marks in order to generate traffic to its website and to generate income through sponsored links. In this way the Complainants marks are being tarnished which is inconsistent with any argument that the Respondent has rights or legitimate interests in the Disputed Domain Names.
The Respondent replied to the Complainant's cease and desist letter of July 1, 2009 as follows:
Thanks for the e-mail. Unfortunately I'm not listing these domains for sale at this time as I have a new website that will be implemented to provide an online community for SCANIA owners. I will be sure to add language that we are not affiliated with Scania in any way once our site is up and if Scania is interested in participating in this exciting opportunity implementing a revolutionary information system, please let me know.”
In a further response to the Complainant's follow-up communications concerning the Respondent's alleged trade mark infringement and requesting transfer of the domain names the Respondent replied:
“My use of scania is qualified as fair use. I will not be bullied, thank you”.
All the Disputed Domain Names resolve to websites containing sponsored links and the Respondent intentionally attempting to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's marks as to source, sponsorship or affiliation or endorsement.
The Respondent owns more than 400 additional domain names including the names of other vehicle makes such as <usedopelforsale.com>, <usedjaguarforsale.com>, <nissanforsale.net> and <poscheforsale.net>. This amounts to a pattern of conduct of registering famous domain names for cars and vehicles and these domain names equally resolve to sponsored links websites. This is additionally evidence of bad faith under Paragraph 4 (b) (ii) of the Policy.
The Respondent did not reply to the Complainant's contentions within the timeframes required by the Rules and as discussed in detail below will not therefore be considered by the Panel...
The Respondent filed a Response but failed to file it within the mandatory 20 day period after commencement of this proceeding as required under Paragraph 5(a) of the Rules. The Panel is satisfied that the Respondent was clearly notified of the requirement to file its response within this timeframe as set out in the standard Complainant Transmittal Coversheet and the Center's Notification of Complaint and Commencement of Administrative proceeding document.
The Rules are quite clear that a Respondent shall file its Response within the stated period and under Rule 14(a) the Panel shall proceed to a decision unless there are exceptional circumstances supporting an extension of time. Having considered the Respondent's e-mail correspondence with the Center concerning late filing, the Panel is satisfied that there are no exceptional circumstances in this case. It appears that the Respondent simply failed to read the Complainant Transmittal Sheet and the Center's Notification of Complaint and Commencement of Administrative proceeding document, to consider the rules or to take appropriate advice in a timely fashion. None of these reasons suffice to support an extension on the basis of exceptional circumstances and the Panel must proceed to a decision on the basis of the Complaint alone.
The Panel finds that the Complainant has registered trade mark rights in numerous jurisdictions in the trade mark SCANIA and accepts that it has already been found by previous panels that the mark is well-known Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169.
It is well established that generic suffixes and prefixes will generally not distinguish a domain name, in particular where the domain name incorporates a well known mark. Similarly in this case the Panel finds that the addition of the suffix “for sale” with the singular or plural of the word SCANIA does not serve to distinguish the Disputed Domain Names and as a result the Disputed Domain Names are each confusingly similar to the Complainant's well known SCANIA trade mark Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488.
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no legitimate right or interest in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Panel accepts that the Complainant has in no way authorised or permitted the Respondent's use of the Disputed Domain Names and has never had any past business association with the Respondent concerning the Complainant's products. There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain names or through use has acquired a bona fide interest or rights in them. Accordingly the Complainant has made out a prima facie case under this limb of the Policy.
The Respondent indicated to the Complainant in its responses to the Complainant's cease and desist letter and subsequent communications that it was planning on using the Disputed Domain Names for the purposes of providing an on-line community for SCANIA owners and that it would accordingly include a disclaimer on its websites. However there is no evidence of these websites before the Panel and it appears that the Disputed Domain Names continue to resolve to sponsored link sites. Also, this intention begs the question as to why the Respondent felt moved to register four domain names instead of one for the purposes of its proposed on-line community.
In these circumstances the Panel finds that the Respondent has not rebutted the Complainant's case and the Complainant also succeeds under this element of the Policy.
In view of the renown attaching to the Complainant's SCANIA trade mark, the circumstances in which the Disputed Domain Names all resolve to sponsored link websites, and the Respondent's previous pattern of conduct in registering famous trade marks for vehicles in domain names with similar suffixes the Panel finds the Complainant's case for imputing bad faith as more than persuasive.
It appears that the Respondent has intentionally registered the Disputed Domain Names in an attempt to confuse Internet users as to the source, sponsorship or affiliation of the of the website and in view of the nature of the sponsored link sites to which the Disputed Domain Names resolve it is reasonable to infer that this was for commercial gain and fulfills the circumstances required by paragraph 4(b)(i) of the Policy.
In addition the Respondent's activities in registering very many (and possibly according to the Complainant up to 400) additional domain names to a similar pattern certainly appears to be conduct comprising bad faith under paragraph 4(b)(ii) of the Policy. Many of these domain names incorporate famous vehicle names and have the same or similar suffixes to the Disputed Domain Names. There is no apparent explanation for these registrations and they appear to equally resolve to sponsored links websites. The Panel finds that this conduct comprises a pattern of conduct for the purposes of this section of the Policy.
Accordingly, the Panel finds that the Complaint 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 names <scaniaforsale.com>, <scaniasforsale.com>, <scaniaforsale.net> and <scaniasforsale.net> be transferred to the Complainant.
Dated: October 14, 2009