WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Scania CV AB v. Sergey Makeev Case No. D2009-1150 1. The Parties
The Complainant is Scania CV AB of Södertälje, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Sergey Makeev of Moscow, Russian Federation. 2. The Domain Names and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a/ PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2009. On August 28, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a/ Public Domain R a request for registrar verification in connection with the disputed domain name. On August 29, 2009 Directi Internet Solutions Pvt. Ltd. d/b/a/ Public Domain R 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 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 amendment to the Complaint setting out details of the registrant on August 31, 2009.
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 the Respondent of the Complaint, and the proceedings commenced on September 2, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 22, 2009. The Respondent did not submit any Response. Accordingly the Center notified the Respondent's default on September 30, 2009. 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 is the owner of trademark rights in the mark SCANIA.
It is a leading manufacturer of heavy trucks and buses as well as engines and services. It also markets itself as offering a broad range of service related products and financing services. It is a global company with operations in Europe, Latin America, Asia, Africa and Australia; in more than 100 countries in the world. According to the Complainant, it is the world's third largest manufacturer for heavy trucks and the world's third largest manufacturer for heavy buses. This can be seen from marketing material which is exhibited as online print-offs at Annex 7 to the Complaint.
The Complainant has registered the mark SCANIA as a word mark in respect of heavy vehicles and engines in several classes in more than 150 countries. At Annex 5 (not Annex 3 as referred to in the Complaint) the Complainant exhibits a list of the very numerous registrations of SCANIA worldwide.
The Complainant has also registered the mark SCANIA as a domain name under over 150 different tld worldwide. A list of these are set out at Annex 8 to the Complaint.
The Complainant submits that the mark “scania” has the status of a well-known trade mark under the provisions of Article 6 bis of the Paris Convention. This has apparently been referred in earlier decisions under the UDRP and in particular Scania CVAB v. Lief Westlye,WIPO Case No. D2000-0169, which is referred to in the Complaint where the panel accepted that SCANIA is a well-known mark in the motor industry”.
In the absence of a Response and any evidence to the contrary, the Panel accepts the truth of the above evidence. 5. Parties' Contentions A. Complainant
(i) The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In particular, it submits that the addition of the suffix “parts” does not have any impact on the overall impression of the dominant part of the domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
(iii) The Complainant submits that the Respondent has no registered trade marks or trade names corresponding to the domain name and that there is no evidence that the Respondent has any legitimate rights in the domain name.
(iv) The Complainant submits that because SCANIA is a famous trade mark, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the domain name at the time of registration.
(v) The Complainant submits that the domain name was registered and is being used in bad faith.
(vi) The Complainant relies upon the evidence of the Complainant's mark SCANIA having the status of a well-known trade mark and the absence of any authorisation from the Complainant to use the mark. It submits that it is “obvious that the Respondent registered the domain name with full knowledge of the Complainant's rights in the trade mark SCANIA”. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or confusingly similar
The Complainant submits that the dominant part of the domain name consists of the word “scania” which is identical to the registered trade mark SCANIA which has been registered by the Complainant as a trade mark and domain name in numerous countries all over the world. On the evidence, the Panel accepts this submission.
The Complainant also submits that the suffix “parts” to the domain name is not relevant and will not have any impact on the overall impression of the dominant part of the name “scania”.
The Complainant submits that there is a likelihood of confusion including an obvious association with a trade mark of the Complainant.
The Panel accepts on the evidence that the domain name is confusingly similar to the mark SCANIA in which the Complainant has rights. It also takes into account that the generic part of the domain name is the word “parts” which is commonly associated with the supply of spare parts by the motor manufacturing industry of which the Complainant is a part. It finds that the disputed domain name is confusingly similar to the mark SCANIA. B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the domain name. It is clear from the Complainant's submissions that no licence or authorisation was given by the Complainant to the Respondent to use the mark SCANIA. For example, the Respondent is not an authorised dealer of the Complainant's products and according to the Complainant has never had a business relationship with the Complainant.
The Complainant relies upon the fact that SCANIA is a well-known trademark and that therefore it is highly unlikely that the Respondent would not have known of the Complainant's rights in the mark at the time of registration of the domain name. It submits that it is “rather obvious as it is the same as the trade mark that has motivated the Respondent to register the domain name”.
The Panel accepts the Complainant's submissions and finds that on the evidence submitted by the Complainant that the Respondent has no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith
The Complainant, relies upon the fact that the trade mark SCANIA used in respect of heavy vehicles and industrial and marine engines belonging to the Complainant has the status of a well-known and reputed trade mark with a substantial and widespread reputation throughout the whole Community and throughout the world.
The Complainant submits that “passive holding” of the domain name may constitute bad faith use and relies upon Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003. In the absence of submissions to the contrary, the Panel accepts this submission. It also accepts the submission that the domain name is “so obviously connected with the Complainant and its products that its use by someone with no connection with the Complainant suggests “opportunistic bad faith””.
The Complainant relies upon a cease and desist letter allegedly sent to the Respondent on June 17, 2009 and which is annexed at Annex 10 to the Complaint. The Panel has looked at Annex 10 but notes that Annex 10 is in fact a letter and other correspondence between a third party relating to the domain names and which are not the subject of the present Complaint. Moreover, the cease and desist letter addressed to a third party is dated June 29, 2009. The Panel, therefore, in reaching its submissions in relation to bad faith does not rely upon Annex 10 to the Complaint.
Nevertheless, in the absence of submissions to the contrary, the Panel accepts the general submissions relating to bad faith made by the Complainant and finds that the domain name was registered and is being used in bad faith. 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.
Clive Duncan Thorne
Sole Panelist
Dated: October 14, 2009
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