WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB v. Robert Mlodzinski and PrivacyProtect.org
Case No. D2013-1495
1. The Parties
The Complainant is Scania CV AB of Södertälje, Sweden represented by Melbourne IT Digital Brand Services, Sweden.
The Respondents are Robert Mlodzinski of Konin, Poland and PrivacyProtect.org of Nobby Beach, Queensland, Australia (collectively, “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <robiscania.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2013.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 8, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a Swedish joint stock company founded in 1891 and registered as a Swedish company in 1962. The Complainant is a leading manufacturer of heavy trucks and buses as well as engines and services, and markets and sells a broad range of service-related products and financing services. The Complainant is a global company with operations in Europe and its operations are based in more than 100 countries, including Poland. 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 Poland with Community trademark registration number 2896215 in 2004 (the “Trademark”).
The Respondent is a supplier of spare parts to vehicles from various brands and is located in Poland.
The Respondent registered the disputed domain name on February 21, 2013.
5. Parties’ Contentions
The Complainant put forward that it has many registrations of the SCANIA trademark worldwide and that it should be considered a famous trademark as meant in Article 6bis of the Paris Convention for protection of Industrial Property. The dominant part of the disputed domain name comprises the word “scania,” which is identical to the Trademark. The disputed domain name is confusingly similar to the Trademark as the addition of the prefix “robi” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, SCANIA, instantly recognizable as a world-famous trademark. As the Respondent is a supplier of spare parts to vehicles (from various brands), said suffix is rather fitted to strengthen the impression that the disputed domain name belongs to, or is affiliated with the Complainant. When translating the term “robi” from Polish to English it translates to “does,” and it could also be a personal name in Poland. Anyone who sees the disputed domain name is bound to mistake it as a domain name associated with the Complainant. As the prefix of the disputed domain name does not detract from the overall impression, the disputed domain name must therefore be considered to be confusingly similar with the Trademark.
The Respondent does not have a right or legitimate interest in the disputed domain name, which is associated to the Respondent’s own company which he has titled “Robi Scania.” The disputed domain name was registered less than eight months ago, and the Respondent cannot claim to have become commonly known by the name “Robi Scania.” The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is connected to the homepage of a company called Robi Scania or an individual by the name “Robi,” which company provides spare parts to vehicles from various manufactures including the Complainant. A reseller can be found making a bona fide offering of goods and services if the use fits certain requirements: where one is to sell or serve only the trademarked goods and another one to accurately disclose the registrant’s relationship with the trademark owner. This is not at hand in the current case.
It is obvious that the Respondent has registered the disputed domain name that encompasses the Trademark which is well-known in its own business to attract visitors and then direct them to its own company’s website. Moreover, the website under the disputed domain name has a link to a webpage under the domain name <allegro.pl>, which seems to be an online shopping site for the local public. On the Allegro platform, the customer can purchase goods and services from numerous brands including brands that compete with the Complainant. Further, there is no direct offering of the goods at issue, and the websites under the disputed domain name and <allegro.pl> do not in any way disclose the Respondent’s relationship with the Complainant.
The circumstances that the SCANIA trademarks have a substantial and widespread reputation throughout the whole European Community and throughout the world and the considerable value and goodwill of the SCANIA trademarks most likely made the Respondent register the disputed domain name, strongly suggest that the disputed domain name was registered in bad faith.
Further, the Complainant sent the Respondent several cease and desist letters regarding the disputed domain name between April and August 2013, to which the Respondent never replied. The Respondent has also chosen to use a privacy service which might be an attempt to avoid being contacted. However, the Complainant has also contacted the Respondent via its email address as displayed on the website under the disputed domain name with no result. It has been mentioned in earlier disputes under the Policy that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to commercial websites, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of its website. Furthermore, there is no disclaimer on the website explaining the non-existing relationship between the parties. According to the Complainant there is no doubt that the Respondent was aware of the Trademark and the value of said trademark at the point of the registration of the disputed domain name. Accordingly, the Respondent must be considered to have registered and be using the disputed domain name in bad faith
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The disputed domain name contains the Trademark in its entirety, together with the prefix “robi,”which undisputedly seem to represent the Respondent’s (company) name. The Panel agrees with the finding of the panel in Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169, that the Trademark is well known mark in the motor industry. The element “scania” in the disputed domain name should therefore be regarded dominant, and the prefix “robi” does not take away the confusing similarity between the disputed domain name and the Trademark. The Panel is therefore satisfied that the disputed domain name is confusingly similar to the Trademark, and the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant showed that the Respondent operates a website under the disputed domain name, which offers spare parts for vehicles from various manufacturers including the Complainant. When applying the so-called Oki Data principles pursuant to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which determine if a reseller makes a bona fide offerings of the goods under a domain name that include the trademark a complainant relies on, and, while not dispositive, considering that the Respondent is an unauthorized reseller of products under the Trademark, the Panel finds that the Respondent did not make bone fide offerings via the disputed domain name. The reason is that the Respondent uses the disputed domain name to also offer products which are not branded “SCANIA,” thereby using the Trademark to bait Internet users and then switch them to other products, and the Respondent failed to accurately disclose its relationship with the Complainant.
The Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service offered on the respondent’s website or location.
The Complaint states that the Respondent has registered and uses the disputed domain name in bad faith. As mentioned above under Section B, the Complainant alleged that the Respondent’s website under the disputed domain name offers products which directly compete with the products offered by the Complainant under the Trademark. Thereby, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark. The Respondent must have been aware of the Trademark when it registered the disputed domain name, as the Trademark is well-known for the products actually offered by the Respondent, and the Respondent seems to have combined its own name and the Trademark.
For the reasons above the Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, and that also the third and last element of paragraph 4(a) of the Policy is met.
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 <robiscania.com> be transferred to the Complainant.
Date: October 17, 2013