WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scout24 Holding GmbH v. Hans-Jürgen Lenk
Case No. D2011-1841
1. The Parties
The Complainant is Scout24 Holding GmbH of München, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Hans-Jürgen Lenk of Phuket, Thailand.
2. The Domain Name and Registrar
The disputed domain name <phuketscout24.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2011. The same day, the Center transmitted by email to the registrar a request for verification in connection with the disputed domain name. On October 31, 2011, Key-Systems GmbH dba domaindiscount24.com. 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”).
Between November 1, 2012 and November 22, 2012, an exchange of emails took place between the Center and the Parties as to the language of proceedings. The Complainant formally requested English to be the language of the proceedings, regardless of German being the language of proceedings. The Respondent did not provide comments regarding this issue.
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 November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2011.
The Center appointed Daniel Kraus as the sole panelist in this matter on January 17, 2012. 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 member of the “Scout24-Group”, one of the leading groups of online market places in Europe. The “Scout24-Group” operates various online market places in various European countries, amongst others travelling market websites under the name “travelscout24” (e.g. “www.travelscout24.de”).
The Complainant is owner of numerous trademark registrations for SCOUT24 in various countries, including community trademark registrations 1677020 SCOUT24, 7393804 SCOUT24 and 7398738 SCOUT 24 (fig.). These trademarks are inter alia registered for “travel organisation and arrangement, arrangement of tourist services, sightseeing, escorting of travellers”.
The Complainant also owns a trademark series that include the element SCOUT24 such as community trademark registrations 1677178 TRAVELSCOUT24, 7389811 TRAVEL SCOUT 24 (fig.) 4906244 LOCALSCOUT24, 4906608 REGIOSCOUT24, 3383271 FRIENDSCOUT 24, 1677194 JOBSCOUT24, 1677210 IMMOBILIENSCOUT24, 4427464 ELECTRONICSCOUT24, 1869619 SHOPPINGSCOUT 24, 1869684 TICKETSCOUT24, 3383262 FINANCESCOUT24 and 4427522 MEDIASCOUT24. Most of these trademarks are registered inter alia for “travel organisation an arrangement, arrangement of tourist services, sightseeing, escorting of travellers”. Finally, the Complainant or affiliated companies are owners of various domain names with the element “Scout24”, amongst others inter alia of <scout24.de>, <scout24.com>, <scout24.eu>, <travelscout24.de>, <localscout24.com>, <friendscout24.com>, <jobscout24.com>, <electronicscout24.com>, <shoppingscout24.de>, <ticketscout24.de>, <financescout24.com> and <mediascout24.com>.
The disputed domain name resolves to the website “www.phuketScout24.com”, which provides for online-booking of hotels and tourist activities in Phuket. Its date of registration is unknown.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the domain name <phuketscout24.com> is identical or nearly identical to his trademarks and domain names in which it owns exclusive rights. It is dominated solely by the element “Scout24” since “Phuket” is a purely descriptive geographic term. Moreover, the Respondent offers information in connection with the island “Phuket” on “www.phuketscout24.com”. This shows that the term “phuket” of “phuketscout24” is purely descriptive in the case at hand. Thus, the disputed domain name <phuketscout24.com> is solely dominated by the element “Scout24”, which is identical compared to the Complainant’s SCOUT24 trademarks. For this reason already, the disputed domain name <phuketscout24.com> is identical or confusingly similar to the trademark SCOUT24 of the Complainant.
the Complainant further argues that “phuketscout24” is confusingly similar to its SCOUT24 trademark series. All trademarks from the series of the Complainant, beside the sole SCOUT24 trademarks, contain the distinctive element “Scout24” and a descriptive prefix (e.g. “travel”, “local”, “regio”, “finance”, “electronic”, “ticket”, “shopping”, etc.). The Respondent uses the same construction in the disputed domain name <phuketscout24.com> (distinctive element “Scout24” and descriptive prefix “phuket”). Moreover, due to the fact that German is also a language used on the website associated with the disputed domain name, it is also directed to German consumers, to which the “Scout24”-trademark series of the Complainant is known. The Complainant finally contends that the offer on the Domain belongs to the “travel and tourist area”, a field of activity in which the Complainant has successfully dealing business for many years, especially under the trademark TRAVELSCOUT24. Therefore, the Complainant contends that the disputed domain name <phuketscout24.com> leads to the false impression that it is another domain name of the Complainant. The disputed domain name <phuketscout24.com> is hence confusingly similar to the trademarks of the Complainant.
Rights or Legitimate Interests
According to the Complainant, the Respondent has no rights or legitimate interests with respect to the disputed domain name <phuketscout24.com>.
Registered and Used in Bad Faith
The complainant asserts that the disputed domain name <phuketscout24.com> was registered exclusively for the purpose of exploiting the reputation of the Complainant and its trademarks, trademark series and trade name with the element SCOUT24. Therefore, the disputed domain name was registered and used in bad faith. This is supported by the fact that the Respondent did not respond in detail to the Complainant’s cease and desist letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary decision regarding language
The language of the registration agreement between the Respondent and the Registrar of the disputed domain name is German, according to information obtained by the Center from the Registrar. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel, once appointed).
In the present case however, it seems that the Respondent is perfectly fluent in English. The offers provided on the website “www.phuketscout24.com” are in German and in English, as apparent from Annex 2 provided by the Complainant. Besides, English is far more common than German in Thailand, where the Respondent seems to be living. The Respondent hence cannot ignore English. In comparable cases, (see e.g. SWX Swiss Exchange vs. SWX Financial Ltd., WIPO Case No. D2008-0400) the panel has accepted English as language of the proceedings, even though the language of the registration agreement was different. Same shall apply in the present case. The Panel hence decides that language of proceedings is English.
B. Identical or Confusingly Similar
The Complainant has established registered trademark rights in the term SCOUT24.
The disputed domain name includes the Complainant’s trademark in its entirety together with the generic word “Phuket”. This additional generic term however fails to dispel the connection between the domain name and the trademark (see e.g. AutoScout24 Deutschland GmbH. v. Mark Marchese, WIPO Case No. D2005-0777).
It is dominated solely by the element “Scout24”, since “phuket” is a pure descriptive geographic term. Thus, the disputed domain name <phuketscout24.com> is solely dominated by the element “Scout24” which is identical to the SCOUT24 trademarks.
The disputed domain name is therefore confusingly similar to the Complainant’s SCOUT24 trademark.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Rules provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraphs 4(c)(i) and (iii) of the Policy, the Panel concludes that the Complainant used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering cannot be considered to be bona fide nor does it constitute legitimate non commercial or fair use.
As to paragraph 4(c)(ii), there is no evidence that the Respondent has ever been commonly known by the disputed domain name.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel hence concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Based on the case record, the Panel is satisfied that the disputed domain name was registered and used exclusively for the purpose of exploiting the reputation of the Complainant and its trademarks, trademark series and trade name with the element SCOUT24. Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the Panel finds that the disputed domain name was registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <phuketscout24.com> be transferred to the Complainant.
Dated: January 31, 2012