WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB v. Ana Garcia
Case No. D2013-1511
1. The Parties
The Complainant is Scania CV AB of Södertälje, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ana Garcia of Aizoain, Spain.
2. The Domain Names and Registrar
The disputed domain names <recambiosscania.com>, <scaniaaccessories.com> and <scaniaspareparts.com> are registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 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 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 September 6, 2013. On September 16, 2013, the Center received an email communication from a third party, related to the Respondent, requesting information regarding the Proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2013. The Response was filed with the Center on September 26, 2013.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 10, 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 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 Spain. 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 Spain with Community trademark registration number 002896215 in 2004 (the “Trademark”).
The Respondent registered the disputed domain names on October 26, 2012.
5. Parties’ Contentions
The Complainant put forward that it has many registrations for 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 names comprises the word “scania”, which is identical to the Trademark. The addition to the disputed domain names of the suffixes “accessories”, “spareparts” and the prefix “recambios” (which is the English word for spares) are not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain names, “scania”, which is instantly recognizable as a world famous trademark. Said suffixes and prefix are easily associated with the Trademark as it is, naturally, something which the Complainant offer as a complement to its main trucking business.
Anyone who sees the disputed domain names is bound to mistake them for names related to the Complainant. The likelihood of confusion includes an obvious association with the Trademark. With reference to the reputation of the Trademark there is a considerable risk that the trade public will perceive the disputed domain names either as domain names owned by the Complainant or that there is some kind of commercial relation with the Complainant. The Trademark also risks being tarnished by being connected to the Respondent’s websites. By using the Trademark as a dominant part of the disputed domain names, the Respondent exploits the goodwill and the image of the Trademark, which may result in dilution and other damage for the Trademark.
The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain names. The Complainant has also not found anything that would suggest that the Respondent has been using “scania” in any other way that would give them any legitimate rights in the disputed domain names. Consequently, the Respondent may not claim any rights established by common usage. The Respondent is today not using the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the disputed domain names based on the Trademark in order to generate traffic and income through parked pay per click web sites. By this, the Respondent is then using the Trademark by misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the Trademark. No evidence has been found that the Respondent uses “scania” or the disputed domain names as company names or has any other legal right in the name “scania”. The Respondent was not authorized by the Complainant to use the Trademark.
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, strongly suggest that the disputed domain names were registered in bad faith. On June 7, 2013 a cease and desist letter was sent to the Respondent, and later a reminder. Respondent never replied. The disputed domain names are currently connected to parked pay per click web sites. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to web sites, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of its web sites. There is no doubt that the Respondent was aware of the rights the Complainant has in the Trademark and the value of the Trademark, at the point of the registrations. By using the disputed domain names, the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting Internet users for its own commercial gain. For these reasons, the Complainant claims that the Respondent must be considered to have registered and be using the disputed domain names in bad faith.
The Respondent claims that the disputed domain names are neither identical nor confusingly similar to the Trademark as the use of the Trademark in the disputed domain names is only to indicate the destiny of a product, and the other elements of the disputed domain names are generic words that provide the orientation of identification of a product.
The Respondent claims to have rights or legitimate interests with respect to the disputed domain names and claims to have a spare part store in Navarra, Spain, which sells spare parts and accessories of automobiles and trucks. According to the Respondent it would be a monopoly of the Complainant to leave the parallel market without option of being able to compete. The disputed domain names were registered with the intention to direct the Respondent’s customers to a website which offers accessories and spare parts for their vehicles.
The Respondent did not register nor use the disputed domain names in bad faith as it did neither offer the disputed domain names for sale, nor did it use the disputed domain names for extortion purposes, such as cybersquatting. The content of the web sites under the disputed domain names is not illegal, disloyal, malicious or hostile, and the Respondent argues that it never acted in bad faith by trying to seize clients of any mark.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
C. the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names contain the Trademark in its entirety, together with the generic words “recambios” (which is the Spanish word for spare parts), “accessories” and “spare parts,” respectively. It has been consistently decided in cases under the Policy that adding a common or descriptive term to an established mark does not affect the finding that a domain name is confusingly similar (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). The Panel agrees with the finding of the UDRP panel in Scania CV AB v. Leif Westlye , WIPO Case No. D2000-0169, that SCANIA is a well-known mark in the motor industry, and that Internet users looking for information about the Complainant or its products could easily believe that the disputed domain names provide information from the Complainant or its products. The Panel is therefore satisfied that disputed domain names are confusingly similar to the Trademark.
Accordingly, 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 names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant stated that it has not authorized the Respondent to use the Trademark as part of the disputed domain names and that the Respondent is not commonly known by one or more of the disputed domain names, which the Respondent has not denied. The Complainant further showed that the web sites under the disputed domain names are pay per click web sites, providing the Respondent with an income per clicked advertisement. The Respondent claims to have a spare part store in Navarra, Spain, which sells spare parts and accessories of automobiles and trucks and that it has the intention to use the disputed domain names for a website which would offer accessories and spare parts for vehicles. In absence of any evidence showing that the Respondent made actual preparations for such website, and bearing in mind that such website would only constitute a bona fide offering of goods or services if the Respondent would at least comply with the conditions as set forth in to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which the Panel can certainly not establish from the Response, the Panel finds that the Complainant showed a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The second first element of paragraph 4(a) of the Policy is therefore 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 names in bad faith where a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website or location or of a product or service offered on the respondent’s web site or location.
The Panel considers the Trademark being well-known and finds that it is likely that the Respondent was aware of the Trademark when it registered the disputed domain names. The Respondent has not rebutted that the pay per click websites under the disputed domain names generate income. By using the disputed domain names with the Trademark to this effect, the Respondent intentionally attempts to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Trademark. The fact that the content of the web sites at the disputed domain name may not be unlawful and that the Respondent has not offered the disputed domain names for sale does not take away the Panel’s finding that the Respondent registered and uses the disputed domain names in bad faith.
The third and last element of paragraph 4(a) of the Policy is therefore also 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 names <recambiosscania.com>, <scaniaaccessories.com> and <scaniaspareparts.com> be transferred to the Complainant.
Date: October 19, 2013