WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scout24 Holding GmbH v. Rive Valentino, Ogi Holding Sro
Case No. D2013-1502
1. The Parties
The Complainant is Scout24 Holding GmbH of Munich, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Rive Valentino, Ogi Holding Sro of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <elettronicascout24.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2013. On August 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2013, 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. The Complainant filed an amendment to the Complaint on September 2, 2013.
On August 30, 2013 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is Italian. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on August 30, 2013. The Respondent did not reply. The Center thus informed the Parties that it would send all case-related communications in both English and Italian, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 with the amendment to the Complaint, and the proceedings commenced on September 9, 2013. In accordance with the Rules, paragraph 5(a), 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 George R. F. Souter as the sole panelist in this matter on October 9, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is a German company which operates various online market places under various trademarks with the element “Scout24”. The Complainant and the members of the “Scout24-Group” always use a trademark design in orange and blue colours where the first word element (e.g. “finance”, “auto”, “immobilien”, etc.) is placed on the top in a blue rectangle, where the element “Scout24” is on the bottom in an orange rectangle with a rounded edge at the right bottom side.
Details of its ownership of various European Community trademark (CTM) registrations incorporating the element “Scout24” have been supplied to the Panel by the Complainant. These include CTM No. 738992 in respect of the trademark ELECTRONICSCOUT24 (figurative trademark) and CTM No. 4427464 in respect of the trademark ELECTRONICSCOUT24.
The disputed domain name was registered on April 30, 2013.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its trademark ELECTRONICSCOUT24, the only difference being the substitution of “electronic” by “elettronica”, which is the Italian equivalent to “electronic”.
The Complainant alleges that the Respondent is, to the best of the Complainant’s knowledge, not entitled to any trademark, trade name or any other right in the name “elettronicascout24”. There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorization from the Complainant to use the sign “elettronicascout24” or register the disputed domain name incorporating the Complainant’s trademarks.
The Complainant alleges that the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name in bad faith, and has provided the Panel with details of the Respondent’s use of the web site operated under the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has requested that the language of these proceedings should be English, notwithstanding the fact that the language of the registration agreement is Italian. The Panel notes that Italian is not an official language in either Germany or Slovakia where the parties are located. The Complainant is not proficient in the Italian language. In spite of having received all case-related communications from the Center in Italian as well as English, the Respondent chose not to take part in these proceedings. In all these circumstances, the Panel feels that convenience dictates that the language of these proceedings should be English in accordance with paragraph 11(a) of the Rules.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
The Panel takes the view that, in a comparison between “electronicscout24” and “elettronicascout24”, the mere substitution of “electronic” by its Italian language equivalent “elettronica”, both of these elements functioning as a pointer to a trade sector, is insufficient to avoid a finding of confusing similarity, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has drawn the Panel’s attention to the website operated under the disputed domain name, in which the Complainant’s blue and orange rectangle design has been reproduced, with the word “elettronica” in the upper blue rectangle, and “Scout24” in the lower orange rectangle. In the Panel’s view, this is likely to mislead consumers to believe that the web site is in some way associated with the Complainant’s business, and seems to have been deliberately “engineered” to produce this effect.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. The content featured on the web site operated under the disputed domain name, discussed in the preceding paragraph, illustrates, in the Panel’s opinion, intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by the Complainant. There is no evidence in the record to refute this conclusion. The Panel accordingly finds, in the specific circumstances of the present case, that the disputed domain name has been registered and is being used in bad faith. The Panel, therefore considers that the Complainant has satisfied the dual test of 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 <elettronicascout24.com> be transferred to the Complainant.
George R. F. Souter
Date: October 23, 2013