WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scandic Hotels AB v. Contact Privacy Inc. Customer 0145113232 / ICS INC.
Case No. D2017-2040
1. The Parties
Complainant is Scandic Hotels AB of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0145113232 of Toronto, Ontario, Canada / ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <scandichotells.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2017. On October 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2017, 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 October 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 31, 2017.
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 Respondent of the Complaint, and the proceedings commenced on November 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2017.
The Center appointed Timothy D. Casey as the sole panelist in this matter on December 6, 2017. 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 is the largest hotel operator in the Nordic region, with a network of 230 hotels and 45,000 rooms in seven countries. Founded in 1963 under a different brand, Complainant has operated under the Scandic brand since 1984.
Complainant owns rights in trademark registrations for SCANDIC in at least Europe and the United Kingdom, including European Union Trade Mark Registrations Nos. 000705418 and 009922601, which were registered in 1999 and 2011, respectively, (the “SCANDIC Trademarks”). Complainant’s website, under the <scandichotels.com> and <scandichotelsgroup.com> domain names, provide information on Complainant’s hotels and have a relatively strong Internet presence.
The disputed domain name was registered on May 12, 2007. The disputed domain name currently redirects visitors to a variety of different websites, including websites that reference Complainant and its business, third party websites that compete directly with Complainant, websites that are unrelated to the hotel business, and possibly malicious websites. The disputed domain name was registered through a privacy service that masked Respondent’s true identity.
5. Parties’ Contentions
Complainant contends that Complainant is not required to have registered the SCANDIC Trademarks in the country of Respondent and that the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in terms of differentiating or distinguishing the disputed domain name from the SCANDIC Trademarks. Likewise, Complainant contends that the addition of the generic/descriptive term “hotels,” which is misspelled by the addition on an extra “l,” as in “hotells,” only underscores and increases the confusing similarity between the disputed domain name and the SCANDIC Trademarks.
Complainant further contends that Complainant has provided prima facie evidence of its ownership of the SCANDIC Trademarks and its exclusive rights therein. Complainant states that Respondent is not sponsored by or affiliated with Complainant, is not commonly known by the disputed domain name, and is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant refers to Respondent’s website redirecting visitors to websites that reference Complainant and its business, third party websites that compete directly with Complainant, websites that are unrelated to the hotel business, and malicious websites that appear to be phishing related, as evidence of the disputed domain name not being used for bona fide offerings of goods or services. Complainant further contends that the disputed domain name is being offered for sale for an amount that far exceeds Respondent’s out‑of‑pocket expenses associated with registering the same.
Complainant notes that the disputed domain name was registered in 2007. However, because the disputed domain name’s registration has been masked through the years, Complainant requests that the Panel not consider 2007 as the year in which the disputed domain name was acquired by Respondent. Complainant also notes that it has been using the SCANDIC Trademarks in commerce since 1980.
As for evidence of bad faith, Complainant alleges that the SCANDIC Trademarks were in use 27 years before the disputed domain name was registered and at the time of registration, Respondent knew of should have known of the existence of the SCANDIC Trademarks because the SCANDIC Trademarks are well known and readily listed in Internet search results. Complainant contends that Respondent’s offer to sell the disputed domain name also constitutes bad faith. Respondent’s use of a privacy service to mask its identity is also alleged as evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant’s use of the SCANDIC Trademarks since 1980, 27 years prior to the first registration of the disputed domain name, and their registration since 1999, are more than sufficient to establish that Complainant has trademark rights in the SCANDIC Trademarks. Registration of trademarks in the nation of residence or origin of Respondent has never been a requirement of the Policy.
Complainant contends that the disputed domain name incorporates the entirety of the SCANDIC Trademarks and is confusingly similar to the SCANDIC Trademarks. Complainant contends that neither the addition of the misspelled generic word “hotells” nor the gTLD are sufficient to change the overall impression of the disputed domain name as being confusingly similar to Complainant’s SCANDIC Trademarks. The Panel agrees and finds that the disputed domain name is confusingly similar to the SCANDIC Trademarks. The Panel also agrees that the addition of the generic word “hotels,” regardless of how it is spelled, does not prevent the confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. The Panel also agrees that the offer for sale of the disputed domain name appears to be for significantly more than Respondent could have paid to register the disputed domain name. Finally, the operation of a website that randomly redirects visitors to websites affiliated with Complainant’s websites, competitor websites and completely unrelated websites, apparently in an effort to obtain click-through revenue, as well as possibly malicious websites, does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the timing of Complainant’s first use and first registration of the SCANDIC Trademarks and Complainant’s use of the SCANDIC Trademarks in association with the noted hotel services, and the subsequent timing of the first registration of the disputed domain name, using terms that clearly associate the disputed domain name with Complainant’s goods and Respondent’s subsequent usage, the Panel finds that registration of the disputed domain name was in bad faith. There is no need for the Panel to consider Complainant’s request to speculate as to the date of Respondent’s actual acquisition of the disputed domain name because even the registration in 2007 was too late to benefit Respondent’s position.
In addition, the Panel finds the subsequent usage of the disputed domain name, as previously described, to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <scandichotells.com> be transferred to Complainant.
Timothy D. Casey
Date: December 21, 2017