WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB v. Registration Private, Domains By Proxy, LLC / Anthony Giardino
Case No. D2016-0612
1. The Parties
The Complainant is Scania CV AB of Södertälje, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Anthony Giardino of Fort Lauderdale, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <md-scania.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 30, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2016, 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 April 5, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 5, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 27, 2016.
The Center appointed Leon Trakman as the sole panelist in this matter on April 29, 2016. 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, Scania CV AB, a company founded in 1891, manufactures and sells trucks, buses and engines for heavy transport applications, and service-related products and financing services globally. The Complainant is the owner of a number of trademarks, registered in different countries, including United States trade mark SCANIA, registered on October 28, 1969, and is the owner of the domain name <scania.com>. The Complainant's trademark's status as "a well-known mark in the motor industry" was acknowledged in Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169. See also Scania CV AB (Publ) v. Whois Agent, YourJungle Privacy Protection Service / Gustavo Winchester, WIPO Case No. D2014-0998; 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.
The disputed domain name was registered on January 20, 2016. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant alleges:
- that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights, contrary to Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), 3(b)(ix)(1);
- that the Respondent has no rights or legitimate interests in respect of the disputed domain name, contrary to Policy, Paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2);
- that the disputed domain name was registered and is being used in bad faith, contrary to Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3).
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's mark, other than for the addition of the element "md-" as a prefix to the disputed domain name.
It is widely accepted that a disputed domain name which adds a generic or descriptive term to a Complainant's mark, although not identical to that mark, is ordinarily construed as being confusingly similar to that mark, pursuant to Policy 4(a)(i). See Pfizer Inc v. Intermeds, LTD/ John Velasquez, WIPO Case No. D2005-0153.
The Panel finds that the disputed domain name, while not being identical to the Complainant's mark, is confusingly similar to it.
B. Rights or Legitimate Interests
The Respondent is not commonly known by the disputed domain name. The Respondent has failed to make use of that name, other than to redirect Internet users to a website that resolves to a blank page which lacks content, and to send email to legitimate officers of the Complainant in which the Respondent represents that it is legally associated with the Complainant. It is clear, too, that the Respondent is not licensed, nor authorized, nor otherwise permitted by the Complainant to register the disputed domain name which incorporates the Complainant's widely known and internationally registered mark.
Accordingly, the Panel finds that the Respondent lacks a right to or legitimate interest in the disputed domain name; that the Respondent is not providing a bona fide offering of goods or services pursuant to Policy 4(c)(i); and that the Respondent is not exercising a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy, paragraph 4(c)(iii).
C. Registered and Used in Bad Faith
It is evident from the evidence in the case file that the Respondent has not used the disputed domain name to resolve to an active website. However, the Respondent has used it to send emails, purporting to represent the Complainant to numerous people for the purpose of "phishing" sensitive information. Using the disputed domain name as its root, its intention is clearly to create the impression on the recipient that the email is being sent by the Complainant's financial director to the Complainant's customers. The Respondent's purpose is clearly to induce the Complainant's customers to disclose their banking information, indeed to defraud them.
The Panel holds that such a phishing scheme constitutes bad faith registration and use of the disputed domain name. Such conduct clearly cannot constitute a bona fide offering of goods or services. Nor can it constitute a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy, paragraph 4(c)(iii).
The Respondent's bad faith registration and use of the disputed domain name is further evidenced in the Respondent's attempts to contact Complainant's employees to set up meetings by "spoofing", in effect, by hiding its true identity, and by using a forged return address reflecting a domain name owned by the Complainant (<scania.com>). Such "spoofing" constitutes a scam which clearly falls short of a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) and a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii). See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
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 <md-scania.com> be transferred to the Complainant.
Date: May 13, 2016