WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB (Publ) v. Whois Agent, YourJungle Privacy Protection Service / Gustavo Winchester
Case No. D2014-0998
1. The Parties
Complainant is Scania CV AB (Publ) of Södertälje, Sweden, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Whois Agent, YourJungle Privacy Protection Service of Colorado Springs, Colorado, United States of America / Gustavo Winchester of Belo Horizonte, Minas Gerais, Brazil.
2. The Domain Name and Registrar
The disputed domain name <scaniatrucks.com> is registered with DropSave.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2014. On June 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2014, 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 Complainant on June 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 19, 2014.
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 Respondent of the Complaint, and the proceedings commenced on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2014.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 17, 2014. 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
Complainant has been engaged in the fields of the manufacturing of heavy trucks and busses as well as related products and services for many years.
The disputed domain name was registered on April 14, 2014.
Complainant relies upon dozens of registered trademarks in the term “Scania”, including inter alia:
- US trademark SCANIA No. 0879387 registered on October 28, 1969, duly renewed and designating products and services in classes 7 and 12;
- US trademark SCANIA No. 1479031 registered on December 8, 1987, duly renewed and designating products in class 37;
Complainant’s authorized representative sent cease-and-desist letters and reminders to Respondent but never received an answer.
No formal Response was filed by Respondent.
5. Parties’ Contentions
Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) the disputed domain name is confusingly similar to Complainant’s registered trademark SCANIA in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the disputed domain name be identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that Complainant has provided sufficient evidence showing that it has rights on the SCANIA trademark registrations which largely predate Respondent’s registration of the disputed domain name. The Panel finds that Complainant’s registration of the SCANIA trademarks in the United States of America sufficiently establishes its rights in the trademarks pursuant to Policy, paragraph 4(a)(i). See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No.D2000-0503 (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a trademark under Policy, paragraph 4(a)(i)).
Moreover, in light of all the evidence submitted by Complainant, this Panel has no difficulty to find that the trademark SCANIA is well known within the heavy vehicle industry. Previous panels also acknowledged the notoriety of the trademark SCANIA. See Scania CV AB (Publ) v. Ahmad Tehrani, WIPO Case No. D2014-0324; Scania CV AB v. Ana Garcia, WIPO Case No. D2013-1511 and Scania CV AB v. Robert Mlodzinski and PrivacyProtect.org, WIPO Case No. D2013-1495. Therefore this Panel accepts the notoriety of the trademarks SCANIA.
The disputed domain name is comprised of the well-known trademark SCANIA and the generic term “trucks”. As noted by the panel in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, pairing well known trademarks with generic prefixes and suffixes will generally not defeat a claim of confusing similarity. In the present case, pairing SCANIA with the suffix “trucks” actually generates additional confusion, in view of the fact that Complainant manufactures and sells trucks.
The Panel also finds that the “.com” is a descriptive suffix commonly used as a generic Top-Level-Domain (“gTLD”), which does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and Complainant’s trademark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc., Domain Manager, WIPO Case No. D2011-2197.
Previous UDRP panels have found that disputed domain names confusingly similar to the trademark SCANIA. See Scania CV AB (Publ) v. Ahmad Tehrani, WIPO Case No. D2014-0324; Scania CV AB (Publ) v. Ana Garcia, WIPO Case No. D2013-1511. Although this Panel is not bound by previous UDRP rulings, there is no reason it should differ from previous panels.
The Panel therefore considers the disputed domain name to be confusingly similar to the trademarks SCANIA of Complainant, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances shall demonstrate that a respondent has rights or legitimate interests to a domain name:
(i) Before any notice of the dispute, the respondent has used, or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services, or
(ii) the respondent has been commonly known by the domain name, even if he/she has acquired no trademark or service mark rights, or
(iii) the respondent is making a legitimate noncommercial fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complaint states that Respondent is not a licensee of Complainant nor is it authorized to use Complainant’s trademarks in any way. The burden thus shifts to Respondent to provide evidence of a right or legitimate interest. No response having been filed, no evidence or argument has been put forward by Respondent to demonstrate any rights or legitimate interests he may have in the disputed domain name.
The Panel finds that Respondent has no connection or affiliation with Complainant or its trademarks and has not received any license or consent, express or implied, to use the SCANIA trademarks in the disputed domain name or in any other manner. The Panel further finds that on the available record, it has been established that Respondent has never been known by the disputed domain name.
Therefore, the Panel agrees that Respondent lacks rights or legitimate interests in the disputed domain name. See Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to the Policy, paragraph 4(c)(ii) in the <harrywinstondiamond.com> domain name where there was no evidence that the respondent was commonly known by the domain name).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. An example of such permissible use is when domain names consisting of dictionary or common words or phrases supported by posted PPC links are genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase).”
In the case at hand, the Panel finds that Respondent intended to capitalize on Complainant’s well-known trademark, and that it is irrelevant whether Respondent indeed did so.
The Panel finds that such use of the disputed domain name does not constitute either a bona fide offering of goods or service or a legitimate noncommercial or fair use of the disputed domain name as defined by the WIPO Overview 2.0.
Under the circumstance that Respondent did not reply and that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, the Panel concludes that the second element of the Policy, paragraph 4 has been established. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
The second condition required to be satisfied under paragraph 4(a)(ii) above is therefore fulfilled.
C. Registered and Used in Bad Faith
To succeed in an administrative proceeding, Complainant must show not only that the disputed domain name is identical or confusingly similar to its registered trademark and that Respondent has no rights or legitimate interests to the disputed domain name, but also that the respondent registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that are evidence of the registration and use of a domain name in bad faith.
Complainant has submitted ample evidence and argument to support the conclusion that the registration of the disputed domain name was made in bad faith.
The Panel accepts Complainant's contention that the trademark SCANIA is well known internationally. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
The Panel finds on a balance of probabilities that Respondent was aware or ought to have been aware of the existence of the trademark SCANIA. Due to the notoriety of the trademark, in the Panel’s assessment it is hard to believe that Respondent was unaware of Complainant’s SCANIA trademark when the disputed domain name was registered. This knowledge at the time of registration proves that the disputed domain name was registered in bad faith.
It was Respondent’s duty to establish that the registration of the disputed domain name does not infringe on any rights or any third party. A quick Internet search would have revealed the SCANIA trademark to Respondent. Failure to do such a search is a contributory factor to bad faith.
Therefore, the Panel finds that Respondent has registered the disputed domain name in bad faith.
By creating a parking website that featured links to Complainants’ competitors, Respondent similarly used the disputed domain name in bad faith. The purpose of this parking website clearly was to attract Internet users to the site, for profit, based on their confusing Respondent’s domain name and/or website with Complainant and/or its website. Once on Respondent’s website, some users likely click on advertisers’ links, which presumably would confer a commercial benefit on Respondent. The fact that Respondent was willing to pay money to register or acquire this disputed domain name, to continue to maintain it, and to host the website, all are evidence that Respondent expected to profit from the disputed domain name in this way.
The “click-through” or “pay per click” business model, in itself, may be entirely legitimate. It is widely used by websites for the legitimate purpose of funding or subsidizing news, information, directory services or other content that might otherwise be uneconomic to provide, or simply for deriving revenue. The model depends, however, on the attraction of visitors in the first place, often by their making a selection from the results presented by a search engine, or by their guessing the URL of the website. This may be done with a legitimate domain name. If, on the other hand, another’s trademark is used without authorization for the purpose of attracting visitors, then some visitors may be confused into thinking, at least initially, that the website they have reached is in some way endorsed by the Complainant, when it is not.
The Panel notes that Respondent generates pay-per-click revenue from third-party links. Respondent uses the disputed domain name to operate directory websites advertising products and services offered by Complainant’s competitors. The use of Complainant’s trademarks within the disputed domain name creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the resolving website and featured links. Respondent attempts to capitalize on this confusion through the receipt of click-through fees. The Panel finds that such registration and use is evidence of bad faith under Policy 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, NAF Claim No. FA0605000721969 (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s trademark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel agrees with Complainant on the fact that whether Respondent has influenced what links should be included on the site is irrelevant for the finding of bad faith in this case. Furthermore, since Respondent does not use the disputed domain name in a way that constitutes a bona fide offering of goods or service as defined by WIPO Overview 2.0, the Panel infers that no use of the disputed domain name in good faith can be found.
The Panel also notes that the website provides a link offering to buy the disputed domain name. Although this is a contributory factor of bad faith, this fact is disregarded by the Panel as it was not stated by Complainant in its Complaint. Moreover, in light of all the evidence provided by Complainant, there is no need to discuss that fact.
The Panel also finds that Respondent’s failure to respond to Complainant’s cease-and-desist letter and to the Complaint is an additional element evidencing Respondent’s bad faith.
Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel deduces from this failure to respond that Respondent could not provide any evidence of good faith registration and use of the disputed domain name (eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to 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 <scaniatrucks.com> be transferred to Complainant.
Date: July 21, 2014