WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scandic Hotels AB v. Great Camanoe Investments Ltd / Belize Domain WHOIS Service Lt
Case No. D2007-0813
1. The Parties
The Complainant is Scandic Hotels AB, Stockholm, Sweden, represented by Mannheimer Swartling Law Firm, Sweden.
The Respondent is Great Camanoe Investments Ltd / Belize Domain WHOIS Service Lt, Belmopan, Belize.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2007. On June 6, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 11, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 18, 2007. 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”), 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 June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2007.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on July 18, 2007. 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 leading hotel chain in the Nordic countries with about 140 hotels in Belgium, Denmark, Estonia, Finland, Germany, Italy, Lithuania, the Netherlands, Norway and Sweden. According to the Complainant the hotel business has been running since 1963, and since 1984 under the trade mark SCANDIC.
The Complainant owns and holds the trade marks SCANDIC and SCANDIC HOTEL (word and device marks) which are protected by a large number of trade mark registrations (including several registrations of word marks) in a large number of countries, included but not limited to Belgium, Denmark, Egypt, Estonia, Finland, Germany, Italy, The Netherlands, Norway, Sweden, Taiwan, Province of China and Thailand. Furthermore the Complainant also owns various Community trade mark registrations for the word and device mark SCANDIC.
The Complainant has registered and is using the Domain Name for its business.
A Whois-search shows that the Domain Name was registered on October 28, 2004. The website linked to the Domain Name contains a sponsored link to the official website of the Complainant. The website also contains sponsored links to several hotel booking sites in Sweden and the rest of Europe. Via these booking sites various hotels can be booked, including competitors of the Complainant.
On March 8, 2007, the Complainant sent a cease and desist letter to the registrant of the Domain Name at the time and urged this registrant to transfer the Domain Name to the Complainant. The Complainant did not receive any response from this registrant to the cease and desist letter.
The Panel ascertained that the Respondent has been involved in several domain name disputes in the past. In each dispute the Respondent has been ordered to transfer the domain name it registered (i.e. Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Lt., WIPO Case No. D2007-0626; Above All Advertising Inc. v. Belize Domain Whois Service Lt., WIPO Case No. D2007-0775).
5. Parties’ Contentions
A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant contends that the Domain Name is identical and confusingly similar to Complainant’s trade marks. The Domain Name is identical to the Complainant’s trade mark SCANDIC HOTEL and the dominant part of the Domain Name consists of the trade mark SCANDIC of the Complainant.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name on the basis of the following arguments:
(i) The Respondent has no license or other consent from the Complainant to use the trade marks of the Complainant as a Domain Name;
(ii) The Respondent is not, and has not been, commonly known by the Domain Name;
(iii) The Respondent is making a commercial and unfair use of the Domain Name. The Respondent is misleadingly diverting consumers from the Complainant’s official website “www.”, with the intent for commercial gain for the Respondent.
(iv) There is a substantial risk that the use of the Domain Name will lead customers away from the Complainant’s official website and thereby cause damage to the Complainant. The average Internet surfer expects to find the official website of the Complainant on the website connected to the Domain Name.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant’s trade marks are well-known and it should therefore be assumed the Respondent was aware of the Complainant and its business. The website contains a sponsored link to the Complainant’s official website. The website under the Domain Name contains information about hotel bookings. By using the Domain Name, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website by using a domain name that is confusingly similar to the Complainant’s trade marks and thereby creating confusion with the Complainant’s mark. The Domain Name disrupts the Complainant’s business since customers are led away from the Complainant’s official website and the website contains hotel booking sites where the Internet user can book hotel rooms from several different hotel chains, including competitors of the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a Response, the Panel shall in accordance with the Rules, paragraph 5(e) decide the dispute based upon the Complaint. Furthermore, the Panel must, under the Rules, paragraph 14(a) “Proceed to a decision on the Complaint.”
For the Complainant to succeed, it must show that the Respondent meets each of the criteria in the Policy, paragraph 4(a):
(i) Respondent’s Domain Name is identical or confusingly similar to a trade mark or service mark in which the 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.
A. Identical or Confusingly Similar
The Domain Name incorporates the undisputed trade mark SCANDIC HOTEL in its entirety. The Domain Name is visually, phonetically and conceptually identical to the Complainant’s trade mark SCANDIC HOTEL. Without the descriptive word “hotel” the dominant part of the Domain Name is also identical to the Complainant’s trade mark SCANDIC.
Therefore, under the Policy, paragraph 4(a)(i) the Panel finds the Domain Name confusingly similar to the trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to or legitimate interests of the Respondent in a Domain Name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a Name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organizations) has been commonly known about the Domain Name, even though it has not acquired any trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleading the divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is established in numerous panel decisions that the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests (i.e. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 and Croatia Airlines d.d. v. Modern Empire Internet Ltd.WIPO Case No. D2003-0455). Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Before notice to the Respondent of the dispute, there is no evidence of its use, or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. To the contrary the Respondent is using the Domain Name solely to benefit from the Complainant’s trade marks and reputation in order to attract browsers looking for Complainant’s web site into viewing unrelated advertisements or web sites.
The Respondent has also not been previously known under the disputed Domain Name. The Panel notes that the Respondent registered the Domain Name long after the numerous registrations of the trade marks SCANDIC HOTEL and SCANDIC of the Complainant.
The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. Taking into account that the Respondent registered and is using a domain name which is identical to the Complainant’s trade mark, the Panel considers it likely that Respondent registered and is using the Domain Name to mislead visitors and to profit consequently for commercial gain from confused visitors looking for the official web site of the Complainant.
The Panel finds that the Complainant has succeed in making out an initial prima facie case that the Respondent lacks rights or legitimate interests. As noted the Respondent did not reply to the Complainant’s contentions and consequently has failed to demonstrate that it has rights or legitimate interests in the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
By failing to file a response, the Respondent has done nothing to contest the allegations of the Complainant that it has registered and is using the Domain Name in bad faith.
The policy, paragraph 4(b) sets out the ways in which the Complainant can show the Domain Name is registered and used in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess if you documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that the Respondent engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Based on the facts the registration and use of the Domain Name by Respondent in bad faith is evident.
The Respondent has registered and uses the Domain Name to benefit from Internet browsers searching for the official website of the Complainant and its services, by creating a likelihood of confusion with the Complainant’s trade marks (i.e. by using an identical domain name as the Complainant’s trade mark SCANDIC HOTEL) and the Domain Name to attract for commercial gain Internet users to the Domain Name. The Respondent has been ordered to transfer domain names for such conduct before. However, this has not restrained the Respondent in any way from continuing this conduct.
Further, the Respondent is using the Domain Name to wrongfully divert consumers looking for Complainant’s services on the Internet to its website. The Respondent likely receives earning for each misdirected visitor to the Domain Name looking for the Complainant’s official website. This use is not bona fide and evidences Respondent’s bad faith attempt to trade on Complainant’s famous trademarks. Moreover, the Domain Name is almost identical to the Complainant’s official Domain Name Scandic-Hotels (only the letter “s” differs), which clearly indicates that the Respondent attempts, by creating a likely hood of confusion with the Complainant’s trade marks, to attract Internet surfers looking for the Complainant’s official website.
Furthermore, the Complainant’s trade marks are widely known; since 1984 the Complainant is running its business under the trade mark SCANDIC and it should therefore be assumed the Respondent was probably aware of the Complainant and its business. In fact the Respondent is probably aware of the Complainant’s trade mark, since the website under the Domain Name contains links to the Complainant’s official website. Moreover, the fact that the Respondent registered a domain name which is identical to the Complainant’s trade mark also shows evidently that the Respondent was probably well aware of the Complainant’s trade marks. The Panel considers it therefore not likely that the Respondent registered the Domain Name coincidently.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4 (a)(iii) of the Policy are satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Dated: August 1, 2007
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