WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Svenska Cellulosa Aktiebolaget SCA v. Skender Alimi Case No. D2010-0884 1. The Parties
The Complainant is Svenska Cellulosa Aktiebolaget SCA of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Skender Alimi of Lorsch, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2010. On June 1, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 4, 2010, 1&1 Internet AG transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 June 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2010.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on July 7, 2010. 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 Svenska Cellulosa Aktiebolaget (SCA) was founded in 1929 and has developed from a forest company to a company that also offers personal care products, tissue and packaging. The Complainant has 52,000 employees in some 60 countries, and annual sales in 2008 amounted to EUR 11.5 billion.
Germany, the domicile of the Respondent, is the Complainant's largest market in terms of sales and second largest in terms of employees. The main brands are ZEWA (toilet paper and household towels), TEMPO (paper handkerchiefs) and DANKE (100% recycled fibre products). The Complainant entered the German market in 1961.
The Complainant has registered various IR and national trademarks in numerous countries around the world, including Germany, incorporating SCA and SCA HYGIENE, and more than 400 domain names containing the term “sca”, including and .
The disputed domain name was registered on March 16, 2009. It is currently inactive and contains a link to “WEB.DE MailDomain and Hosting”. 5. Parties' Contentions A. Complainant
The dominant part of the disputed domain name comprises the Complainant's trademark SCA. The generic suffix “hygienevertrieb” is not sufficient to distinguish the disputed domain name from the Complainant's trademark, and the disputed domain name is thus confusingly similar to the trademarks of the Complainant.
The Respondent does not own any registered trademark or trade names corresponding to the disputed domain name. The Complainant has also not found anything suggesting that the Respondent has been using the trademark SCA in any other way that would give him any legitimate rights in the trademark. Consequently, the Respondent may not claim any rights established by common usage.
It is highly unlikely that the Respondent would not have known of the Complainant's trademarks and business at the time of the registration.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to attract, for commercial gain, Internet users to his website, if not to sell the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name combines the Complainant's trademark SCA HYGIENE with the suffix “vertrieb”, which is the German word for “distribution”. WIPO UDRP panelists have consistently held that the addition of generic suffixes to trademarks generally does not prevent a finding of confusing similarity (for a dispute relating to the same suffix “vertrieb”: Ferrari S.p.A. v. Berthold Buehler,WIPO Case No. D2003-0981 ; for a recent decision, cf. Lego Juris A/S v. Andre Lubrich,WIPO Case No. D2009-1287 ).
Since the disputed domain name is thus confusingly similar to the Complainant's trademarks, the Complainant has fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant submits that no license or authorization of any other kind has been given to the Respondent to use its trademarks and that the Respondent is not an authorized reseller of the Complainant's products.
Furthermore, the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. It is parked with a hosting company.
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the domain name at issue.
The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name presently contains the remark “Hier entsteht eine neue Website” (“website under construction”), together with a link to the hosting page of “WEB.DE MailDomain and Hosting”. It is clearly established that passive holding of a domain name as such does not prevent a finding of bad faith (WIPO Overview of WIPO Panel Views, par. 3.2).
It is also evident that the Respondent's purpose in registering the disputed domain name, if not to sell it to the Complainant, was to divert traffic away from the Complainant's websites to his own website most likely for commercial gain. Any future good faith use of the disputed domain name is simply not conceivable. Such activity falls squarely within the terms of paragraph 4(b)(iv) of the Policy.
It may also be concluded that the Respondent knew of the existence of the Complainant's trademark and its significance in the German market when the disputed domain name was registered on March 16, 2009.
Under the circumstances, the Panel finds that the Respondent's conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy. 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.
Tobias Zuberbühler
Sole Panelist
Dated: July 21, 2010
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