WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scandic Hotels AB v. SKK
Case No. D2011-2078
1. The Parties
The Complainant is Scandic Hotels AB of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is SKK of Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <scandichotel.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2011. On November 25, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 25, 2011, Tucows Inc. 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 December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2011.
The Center appointed William Lobelson as the sole panelist in this matter on January 5, 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 Scandic Hotels AB, a Swedish company that has been running a chain of hotels by the name of Scandic in Scandinavia and Europe for 40 years.
While Scandic Hotels is the corporate name of the Complainant, the latter also owns trademarks rights in the name SCANDIC, such as Community Trademark Nos. 000705418, 006810055, 009922601, as well as a series of national registrations, and a large number of domain names formed with “Scandic” or “Scandichotels”.
The disputed domain name is <scandichotel.com> and was created on July 19, 2002. In July 2011, the Complainant noticed that the disputed domain name was registered in the name of the Respondent. The disputed domain name resolves to a parking page on which sponsored links pertaining to hotels and hotel services are displayed.
The very same domain name had apparently already been transferred to the Complainant, pursuant to a former UDRP decision, i.e., Scandic Hotels AB v. GATE24.COM, WIPO Case No. D2007-0811, but, because of some technical failure at some point, was re-captured by the Respondent which, the Complainant claims, is the same as the respondent in the above cited 2007 UDRP procedure.
The Complainant introduced the present procedure on November 25, 2011, without prior notice to the Respondent, which was found in default by the Center on December 23, 2011.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or at least confusingly similar to its earlier trademarks, domain names and trade name formed with SCANDIC; that the Respondent, with which the Complainant has no relationship and to whom no authorization was ever given to use the name “scandichotel”, does not have any rights or legitimate interests therein; finally that the Respondent registered and uses the disputed domain name in bad faith for it could not ignore the Complainant’s rights, in particular considering that the disputed domain name had already been transferred once from the Respondent to the Complainant pursuant to an earlier UDRP decision in 2007, and that the redirection of the disputed domain name to a parking page dedicated to sponsored links pertaining to hotels is a cause of confusion.
The Respondent did not submit any response and was notified of being in default on December 23, 2011.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is <scandichotel.com>.
The Complainant has brought material evidence of its trademark rights in the name SCANDIC, used as a trademark, trade name and domain name in relation with hotel services.
The trademark SCANDIC is entirely reproduced within the disputed domain name, with the addition of the common generic term “hotel”.
The domain name is therefore not identical to the Complainant’s trademark, but clearly appears confusingly similar thereto.
The addition of the descriptive term “hotel” to “scandic” does not deprive the latter of its distinctiveness and individuality, but furthermore enhances the risk of association in the public’s mind between the Complainant and the disputed domain name.
The trademark SCANDIC being widely used and well known for hotel services, it leaves no doubt that the public will be led to believe that <scandichotel.com> is a domain name that resolves to an official website of the Complainant where its hotel services are promoted.
The Panel is therefore satisfied that the disputed domain name is confusingly similar to the trademark in which the Complainant holds rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1) that the overall burden of proof under paragraph 4(c) of the Policy rests with the complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, the domain name, and that if the respondent fails to answer such case, the complainant is deemed to have satisfied its burden of proof (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant claims that the Respondent has no rights to or legitimate interests in the disputed domain name because:
- The Respondent has not been authorized by the Complainant to register or use the disputed domain name;
- The Respondent does not trade nor is known in the course of trade under the name “Scandic” or “Scandichotel” and does not make any legitimate noncommercial use thereof;
- The Respondent could not ignore the rights vested in the notorious trademark SCANDIC.
The Respondent, being in default, has not presented any justification for holding the disputed domain name.
The Panel observes that the disputed domain name resolves to a parking page which does not seem to indicate that the Respondent would have any kind of trademark or trade name rights in the name “Scandichotel” and which does not contain any reference to a fair commercial use of the name “Scandichotel” by the Respondent in the course of trade nor indicate that the Respondent has been commonly known by the disputed domain name.
The Panel therefore considers that there is no element in the present case which may be interpreted as justifying a finding that the Respondent has any rights or legitimate interests in the disputed domain name.
The Panel is therefore satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and therefore the provisions of paragraph 4(a)(ii) of the Policy have been met.
C. Registered and Used in Bad Faith
The Complainant states that the Respondent would have “re-gained” ownership of the disputed domain name after July 17, 2011, while an earlier UDRP decision (dated July 31, 2007) concerning the very same domain name had been ruled in favour of the Complainant and against the Respondent.
On this issue, the Panel must observe that the 2007 decision referred to, namely: Scandic Hotels AB v. GATE24.COM, WIPO Case No. D2007-0811, was apparently directed against a different respondent.
The Complainant does not bring evidence or material element enabling the Panel to come to the conclusion that GATE.24.COM, the respondent in Scandic Hotels AB, supra, is the same as SKK, the Respondent in the present case.
The only hint in that respect is the e-mail address of the current Respondent, i.e., [...]@gate24.com, which may indeed constitute a presumption that there exists a connection between GATE24.COM, the respondent in the former case and the actual Respondent in the present case.
But the Panel cannot rely upon this sole presumption to find that the disputed domain name was registered in bad faith.
However, the Panel is nevertheless able to come to the conclusion that whenever the disputed domain name was registered by the Respondent, the Respondent, or whoever hides behind the name SKK declared in the WhoIs, was necessarily aware of the Complainant’s rights in the SCANDIC trademark.
The screenshots of the parking page to which the disputed domain name resolves, produced as Annex 11 by the Complainant, reflect that it contains pictures illustrating hotels as well as a number of sponsored links related to hotel reservation services and hotel chains that compete with the Complainant.
It would be an extraordinary coincidence if the Respondent did not have any knowledge of the Complainant and was not aware that the Complainant’s mark SCANDIC is used in relation with hotel services when it registered the disputed domain name, but yet decided to register the disputed domain name <scandichotel.com> and liaise the same with parking pages containing links towards hotel websites.
The fact that the Respondent associated the Complainant’s mark SCANDIC with the term “hotel” in the disputed domain name <scandichotel.com> and directed the same to a page pertaining to hotel services induces that the Respondent had the Complainant’s trademark rights in mind when it registered the disputed domain name.
The Panel is thus satisfied that the disputed domain name was registered in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Furthermore, the use of the disputed domain name in relation with a web page containing links to hotels services, which in fact compete with the Complainant’s, creates a likelihood of confusion in the public’s mind and appears clearly detrimental to the Complainant’s interests, not to mention the fact that the Respondent deliberately takes unfair advantage from the confusion caused with the intention to attract Internet users to its web site, for commercial gain.
The Panel is therefore satisfied that the disputed domain name is also used in bad faith, in accordance with paragraph 4(a)(iii) 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 disputed domain name <scandichotel.com> be transferred to the Complainant.
Dated: January 9, 2012