WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB (Publ) v. Caliskan Grubu Bulent Gurbuz
Case No. D2011-1678
1. The Parties
The Complainant is Scania CV AB (Publ) of Södertälje, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Caliskan Grubu Bulent Gurbuz of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <scaniayetkiliservis.com> (the “Domain Name”) is registered with Alantron Bilisim Ltd. Sti.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2011. On October 4, 2011, the Center transmitted by email to Alantron Bilisim Ltd. Sti. a request for registrar verification in connection with the Domain Name. On October 7, 2011, Alantron Bilisim Ltd. Sti 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 Domain Name. (Alatron Bilisim Ltd. Sti. subsequently identified the disputed domain name registrant as “Caliskan Grubu Bulent Gurbuz”, which the Panel finds to be an appropriate Respondent to identify for purposes of this decision under the Policy.)
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 October 21, 2011. The Panel is satisfied that the Center took reasonable and appropriate steps to notify the Complaint. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 17, 2011. 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.
Language of the Proceeding
Although the language of the Registration Agreement is in the Turkish language, the Panel determines in accordance with the Complainant’s request and the Rules 11(a), that the language of these administrative proceedings shall be the English language. The Panel finds that it would be inappropriate to conduct the proceedings in the Turkish language and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings even though communicated in Turkish and in English.
4. Factual Background
The Complainant is a leading manufacturer of heavy trucks and buses as well as engines. The Complainant also markets and sells a broad range of service-related products and financing services. The Complainant is a global company with operations in Europe. Their operations are based in more than 100 countries including Turkey. The Complainant has an extensive web site targeting Turkey, “www.scania.com.tr”.
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 Turkey. The Complainant has also registered domain names incorporating the SCANIA trademark in over 150 different TLDs worldwide.
The trademark SCANIA was registered long before the registration of the disputed domain name (which was registered in February 2011).
5. Parties’ Contentions
According to the Complainant, the dominant part of the Domain Name <scaniayetkiliservis.com> comprises the term “scania”, which is confusingly similar, as well as identical to, the registered trademark SCANIA, which has been registered by the Complainant as a trademark and domain names in numerous countries all over the world. The addition of the suffix “yetkiliservis” is not relevant and will not have any impact on the overall impression of the dominant part of the Domain Name as SCANIA is instantly recognizable as a world-famous trademark. If anything, the suffix rather strengthens the impression that the Domain Name is connected to the Complainant, since the suffix is closely connected to the Complainant’s business. The word ”servis” is the Turkish translation of the English word “service” and the word “yetkili” means “authorized”.
Also, the addition of the generic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determining the confusing similarity of the trademark.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark.
The trademark SCANIA belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
In earlier UDRP decisions, it has been confirmed that the trademark SCANIA is well known.
The Complainant tried to contact the Respondent through a cease and desist letter. No response was received.
The Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services. The Domain Name serves as to redirect Internet users to websites such as “www.caliskanscania.com.tr” where brands, besides SCANIA are being used, among these, KRONE and MEILLER. When you click on the SCANIA, KRONE or MEILLER logo, an Internet user is re-directed to <caliskanscania.com.tr>. The Complainant’s logotype, as well as logotypes belonging to its competitors, are displayed on the website.
According to the Complainant; the Respondent was aware of the rights the Complainant has in the trademark SCANIA and the value of said trademark, at the point of the registrations. The Respondent is only using the Domain Name as a gateway to its own website “www.caliskanscania.com.tr”. By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
Consequently, by referring to the above-mentioned arguments, the Respondent must be considered to have registered and be using the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) 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
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
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 Turkey. The Complainant has also registered the trademark as domain names under over 150 different TLDs worldwide. The trademark SCANIA was registered long before the registration of the Domain Name.
The Panel concurs with the opinion of several prior UDRP panels, which have held that when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel’s view, the addition of the terms “yetkili” and “servis” (meaning “authorized service”) does not sufficiently distinguish the Domain Name from the Complainant’s trademark.
Additionally the Respondent did not reply to the Complainant’s contentions.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Respondent has not provided any evidence 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 disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services. Nor has the Respondent shown that it has been commonly known by the Domain Name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the SCANIA trademark in the Domain Name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use made of the Domain Name that when the Respondent registered the Domain Name it knew that SCANIA was the trademark of the Complainant, and that it registered the Domain Name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Therefore, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The disputed Domain Name serves as the initial page to further redirect Internet users to websites such as ”www.caliskanscania.com.tr” where brands, besides SCANIA are being used, among these, KRONE and MEILLER. When you click on the SCANIA, KRONE or MEILLER logo at this website an Internet user is re-directed to “www.caliskanscania.com.tr”. The Complainant’s logotype, as well as logotypes belonging to its competitors, is displayed on this website.
The Panel agreed with the Complainant here; the Respondent was aware of the rights the Complainant has in the trademark SCANIA and the value of said trademark, at the point of the registrations. The Respondent is only using the Domain Name as a gate way to its own website ”www.caliskanscania.com.tr”. By using the Domain Name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for his own commercial gain.
It is obvious to this Panel that by using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In view of the above, and specifically to Section 5 of this decision, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the Domain Name or that there is conceivable good faith use for its use of the Domain Name. After examining all circumstances surrounding the registration and use of the Domain Name, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <scaniayetkiliservis.com> be transferred to the Complainant.
Dilek Ustun Ekdial
Dated: December 01, 2011