WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scandic Hotels AB v. LMA Gaming Ltd
Case No. D2012-1036
1. The Parties
The Complainant is Scandic Hotels AB of Stockholm, Sweden, represented by Essen International AB, Sweden.
The Respondent is LMA Gaming Ltd of Paphos, Cyprus, internally represented.
2. The Domain Names and Registrar
The disputed domain names <scandiccasino.com> and <scandiccasino.net> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2012. On May 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 22, 2012.
The Center verified that the Complaint together with the amendment to 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 May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Response was filed with the Center on June 8, 2012.
The Center appointed John Swinson as the sole panelist in this matter on June 14, 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 company headquartered in Stockholm. The Complainant is a hotel chain with over 160 hotels in Scandinavia and northern Europe.
The Complainant is the owner of the registered business name “Scandic Hotels AB” (registered September 28, 1995, the “Business Name”). Prior to this the Complainant was named Scandic Hotel Svenska Aktiebolag.
The Complainant is the owner of the following Trade Marks:
- Community Trade Mark No. 009922601 for SCANDIC (registered September 30, 2011), with priority claims in countries including Sweden (June 18, 1978), Denmark (November 8, 1978) and the United Kingdom of Great Britain and Northern Ireland (December 1, 1997);
- In Sweden, Trade Mark No. 361571 for SCANDIC (registered June 19, 2003);
- In Norway, Trade Mark No. 104305 for SCANDIC (registered February 7, 1980); and
- Community Trade Mark No. 006810055 (figurative) for SCANDIC (registered February 17, 2009)
(together, the “Trade Marks”).
The Complainant holds several domain names containing “scandic”, including <scandichotels.com> and <scandic.se>.
The Respondent is LMA Gaming Ltd, a company located in Paphos, Cyprus. The Respondent operates and markets online gaming websites. The Respondent also purchases premium and standard domain names, to create branded websites (the Respondent provided evidence that it holds at least 751 domain names for this purpose).
The Respondent registered the Disputed Domain Names with the Registrar as follows:
- <scandiccasino.com> on March 18, 2005; and
- <scandiccasino.net> on April 30, 2006.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Trade Marks are used in connection with the Complainant’s hotel and restaurant business.
The Disputed Domain Names are confusingly similar to the Trade Marks. The dominant part of the Disputed Domain Names consists of the word “scandic” which is identical to the Trade Marks, the dominant part of the Business Name, and the common name of the Complainant.
The only difference between Disputed Domain Names and the Trade Marks is the addition of “casino”, which is descriptive of gambling, game and betting services. Casinos are closely associated with the hotel business in which the Complainant engages.
According to the Complainant, the addition of “casino” does not change the overall impression of the Disputed Domain Names. On the contrary, it increases the likelihood of confusion between the Disputed Domain Names and the Trade Marks. Additionally, some of the Trade Marks cover class 41 for “casinos, gambling, game and betting services”.
Rights or Legitimate Interests
The Complainant has not granted the Respondent any license or authorization of any kind to use the Trade Marks and the Respondent does not appear to have any registered trade marks of its own pertaining to the Disputed Domain Names.
The Respondent holds about 59 domain names. It appears that the Respondent conducts gaming and betting services for commercial gain on most of the websites pertaining to these domain names. Under <scandiccasino.net> however, the Respondent provides different types of sponsored links (e.g. to gaming and travel companies).
There is nothing to indicate that the Respondent is dependent on or commonly known by the Disputed Domain Names. The Respondent’s business name does not correspond to the Disputed Domain Names.
The Disputed Domain Names are causing damage to the Complainant’s business. The Complainant takes pride in being a family hotel. The casino and gambling business, and the sponsored links on the websites pertaining to the Disputed Domain Names, do not correspond with the Complainant’s values.
Registered and Used in Bad Faith
The Complainant has carried out its hotel business under the trade mark SCANDIC since 1984 when the Complainant changed its business name to “Scandic Hotels”. The Trade Marks are widely known all over Scandinavia and northern Europe.
At the time the Disputed Domain Names were registered, the Complainant had established hotels in 10 countries and the Trade Marks were known across Europe. It is unlikely that the Respondent, at the time of the registration of the Disputed Domain Names, was unaware of the Trade Marks and the Complainant.
The website to which <scandiccasino.com> resolves is available in Swedish, Norwegian, Finnish and English. Given that the Complainant is especially established in the Scandinavian countries it appears that the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Marks. This constitutes evidence of bad faith.
The Complainant sent a cease and desist letter to the Respondent on March 8, 2012, notifying the Respondent of the likelihood of confusion. The Respondent did not respond.
The website to which <scandiccasino.net> resolves, contains different types of sponsored links. This type of website must be deemed to be registered in bad faith in an attempt to attract users for commercial gain.
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Names are not confusingly similar to the Trade Marks as the descriptive words “casino” and “hotels”, used in the Respondent’s and the Complainant’s domain names, represent very distinct lines of business. A casino cannot be confused with a hotel and the website at <scandiccasino.com> does not make any reference to hotels, leisure, tourism or land based operation, which could cause confusion to potential visitors.
Rights or Legitimate Interests
The word “scandic” is used globally to refer to one or more countries in the Scandinavian region.
The Complainant is a hotel chain and it does not operate casinos under its brand. It is a matter of opinion to propose that the two businesses are “closely associated”. Similarly, it is presumptuous to state that the Complainant’s business is commonly referred to as “Scandic”, since it is a generic term.
The Respondent published a website to the <scandiccasino.com> domain name in August 2007 which was (and is) being used for the purpose of promoting casino games (at the time of registration <scandiccasino.net> redirected to <scandiccasino.com>).
The Respondent provided evidence of marketing spend in relation to a “revamped” version of the “www.scandiccasino.com” website (launched February 1, 2012).
There is no reference to Scandic Hotels, leisure or tourism activities on <scandiccasino.com>.
Registered and Used in Bad Faith
At the time the Disputed Domain Names were registered, the Respondent had no knowledge of the existence of “Scandic” or “Scandic Hotels”. The Disputed Domain Names were registered in good faith by the Respondent, who wanted to create an online casino for the Scandinavian region. As players from Scandinavian countries contributed a large share to the Respondent’s yearly revenue, it made business sense to expand its operation in Scandinavia.
The Disputed Domain Names were not registered by the Respondent in an intentional attempt to attract for commercial gain, users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent uses professional means (e.g. TV advertising and search engine optimization) to attract new business.
As an online gaming business that operates 11 different sites, targeted at different countries, the Respondent cannot be considered as a competitor of a hotel chain, especially since the hotel chain does not offer a land-based or online casino as part of its operation. The Respondent has various other sites aimed at Denmark, Sweden, Finland, United Kingdom and Norway whose domain names were registered as early as 2001 and <scandiccasino.com> was always intended to be part of this Scandinavian portfolio of sites.
The Complainant claims that it sent a cease and desist letter to the Respondent on March 8, 2012, however nothing was received. The Respondent was unaware of the situation prior to this UDRP Complaint.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Complainant bears the onus of proving these elements.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.
The Complainant asserts that it owns the Trade Marks, and provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Marks.
The Disputed Domain Names are a combination of the “scandic” element with the descriptive term “casino”. The “.com” and “.net” generic top level extensions at the end of the Disputed Domain Names are irrelevant in assessing confusing similarity under the Policy and are thus ignored.
The Panel finds that “scandic” remains the dominant element in the Disputed Domain Names. The addition of the descriptive term “casino” does nothing to prevent the confusing similarity of the Disputed Domain Names with the Trade Marks SCANDIC.
This Panel finds that the Disputed Domain Names are confusingly similar to the Trade Marks. As such, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
On the evidence presented to the Panel, there does not appear to be any legitimate, fair, noncommercial or bona fide offering of goods or services through the Disputed Domain Names. This finding is based upon the following:
- the Respondent is not commonly known by the Disputed Domain Names;
- the Respondent registered and began using the Disputed Domain Names after Complainant had established rights in the Trade Marks through registration and/or extensive use of the marks in connection with hotel services;
- there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the Disputed Domain Names;
- the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services. The Respondent’s use of the Disputed Domain Names for a website for an online casino, and for a parking page, was clearly intended to divert Internet users looking for the Complainant’s hotels or to attract consumers looking for an online casino by trading off the reputation associated with the Complainant’s name and Trade Marks.
The Respondent has submitted that the word “scandic” is used to refer to one or more countries in the Scandinavian region. Although the Panel is not required to determine the accuracy of this submission, it notes that even if the Respondent is correct, the mere fact that the Disputed Domain Names have a geographic connotation does not mean that the Complainant should fail (see Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932), or that the Respondent must itself therefore have rights or legitimate interests in the Disputed Domain Names on that basis. Rather, much would turn on whether the Respondent’s intent was to register the Disputed Domain Names because of their geographic connotation or any trade mark value they may possess. Moreover, in this case “scandic” would not simply be a geographical location but would also be a business name and a term in which the Complainant has trade mark rights (see Daydream Island Resort Investments Pty Ltd v. Alessandro Sorbello, eResolution Case No. AF-0586, where “Daydream Island” was not simply a geographical location but also the trading name of a resort).
For the above reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names. Accordingly, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
To establish the requirement under paragraph 4(a)(iii)of the Policy, the Complainant must prove that both registration and use of the Disputed Domain Names are in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.
The Complainant’s business was well established in Scandinavia at the time the Disputed Domain Names were registered and as such, the Panel is not persuaded by the Respondent’s claims that at the time of registration the Respondent was not aware of the Complainant’s trade mark rights. The Panel may have reached a different conclusion if the Respondent had not had, or claimed to have, a nexus or connection to the Scandinavian region, but where the Respondent’s stated purpose was to establish its business in this region, a claimed lack of knowledge of the Complainant’s SCANDIC trade mark becomes less plausible.
In light of the substantial reputation and the undoubted goodwill in the Trade Marks and for the reasons given above, the Panel finds that the Respondent registered the Disputed Domain Names due to the reputation of the Complainant. The Panel notes that the Disputed Domain Name <scandiccasino.net> resolves to a webpage containing PPC links, where such links in this Panel’s view are based on trade mark value. The Disputed Domain Name <scandiccasino.com> resolves to an active webpage offering online gaming services. In both instances, the Panel has taken the view that the registration and use is likely targeted at capitalizing on the Complainant’s SCANDIC trade mark. Accordingly, the Panel finds that the Disputed Domain Names were registered and are being used in bad faith as defined in paragraph 4(b)(iv) 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 Names <scandiccasino.com> and <scandiccasino.net> be transferred to the Complainant.
Dated: June 28, 2012