Complainant is Scania CV AB (Publ) of Södertälje, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is EMS Truck & Trailer, of Northampton, Market Harborough, and Southampton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Names and Registrar
The disputed domain names and are registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 13, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On October 14, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2011.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 25, 2011. 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.
The proceedings were suspended on November 18, 2011 in order to allow the parties to reach an amicable settlement. However, no settlement was reached and Complainant requested to reinitiate the administrative proceedings on November 22, 2011. 4. Factual Background
Complainant, Scania CV AB (publ), is a Swedish joint stock company founded in 1891 and registered as a Swedish company in 1962. Complainant is a manufacturer of heavy trucks and buses as well as engines and services. Complainant also markets and sells a broad range of service-related products and financing services. Complainant submitted as evidence an overview of different SCANIA trademarks in various countries and registered the SCANIA trademark with the United Kingdom Intellectual Property Office on January 24, 1972 and thereafter has duly renewed the trademark (Registration No. 986386).
The WhoIs database provides that EMS Truck & Trailer, Respondent in the instant case, is the current holder of the disputed domain names and , which were registered on October 6, 2009 with Melbourne IT.
The disputed domain names redirect to a website relating to a company called CV Parts Direct. This company provides spare parts to vehicles from different manufactures including Scania, but also from Mercedes, Renault, Volvo and DAF. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain names to be identical or confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names. According to Complainant, Respondent has not used the disputed domain names since its registration. Finally, Complainant considers that the disputed domain names were registered and being used in bad faith. B. Respondent
Respondent did not reply to the contentions of Complainant, but rather expressed an interest in selling the disputed domain names to Complainant. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The burden is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before a panel may order the transfer of a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities, that:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain names were registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the SCANIA trademark used in connection with motor trucks and parts and fittings thereof, it is clearly established that Complainant has rights in the SCANIA trademark.
The disputed domain names comprise the word “Scania”, which is identical to the registered trademark SCANIA, which has been registered by Complainant as a trademark and domain names in numerous countries all over the world. The Panel considers the only difference between the disputed domain names and and Complainants trademark to be the addition of the generic terms “parts” and “direct”.
According to the Panel, the dominant element of the disputed domain names is the word “Scania”. The mere addition of the generic terms “partsdirect” to Complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy See e.g., Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE.
Therefore, the Panel finds that the disputed domain names are confusingly similar with Complainant’s SCANIA trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain name.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not been commonly known by the disputed domain names and that Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. In fact, Respondent is using the disputed domain names to refer to the homepage of the company CV Parts Direct. This company provides spare parts to vehicles from different manufactures including Scania, but also from Mercedes, Renault, Volvo and DAF.
Although a reseller can make a bona fide offering of goods and services, the use of a third party trademark must fit certain requirements and the relationship with the trademark holder must be accurately disclosed. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, where it was held that the website hosted at the disputed domain name must, inter alia, accurately disclose Respondent's relationship with the trademark owner, and only market the goods and services of the trademark owner.
This is not at hand in the current case. Instead, Respondent offers products from all kinds of vehicle brands. The picture displayed in the header of the website to which the disputed domain names redirect shows a truck of the brand Renault, one of Complainant’s competitors. The homepage of the same website also states the following: “We stock a wide range of spare parts for most trucks including Scania, Mercedes, Renault, Volvo & DAF as well as trailers including ROR, Hendrikson, SAF, Neway & BPW.” According to the Panel, Respondent has registered the disputed domain names, including the well-known trademark of Complainant, to attract visitors and then direct them to its own company’s website, which advertises products of competitors of Complainant. Doing so, Respondent is trying to trade off Complainant’s well-known trademark. Such use is not a bona fide use and does not create rights or legitimate interests in the disputed domain names. See TNT Holdings B.V. v. Sylvie Bona,WIPO Case No. D2008-1070; Scania CV AB v. Leif Westlye,WIPO Case No. D2000-0169.
Furthermore, Respondent did not reply to Complainant’s contentions. According to the Panel, the absence of a reply is a further indication that Respondent has no rights or legitimate interests in the disputed domain names. See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
For these reasons, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain names. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the registration of the domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct, and circumstances indicating that the registrant has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
1. Bad Faith Registration
In the instant case, the Panel finds that Respondent should have had knowledge of Complainant’s rights in the SCANIA trademark at the moment it registered the disputed domain names, since Complainant’s trademark is a widely known trademark. See Scania CV AB v. Leif Westlye,WIPO Case No. D2000-0169. The Panel also finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without having any connection or legal relationship with the complainant suggested opportunistic bad faith. Moreover, the act of adding the generic terms “partsdirect” in the domain names is further evidence of bad faith registration, as these generic terms, which relate to Complainant’s business, show that Respondent was not only aware of Complainant’s trademarks, but also of Complainant’s business. See BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.
Therefore, it is established that the disputed domain names were registered in bad faith.
2. Bad Faith Use
Respondent has used the disputed domain names to redirect Internet users to the website of its own company, CV Parts Direct, where it sells products of competitors of Complainant. Doing so, according to the Panel Respondent has taken advantage of Complainant’s reputation and goodwill to divert traffic to its own website for commercial gain. Such use is not a use in good faith with regard to the Policy. See TNT Holdings B.V. v. Sylvie Bona,WIPO Case No. D2008-1070. Furthermore, Respondent registered several domain names including the trademarks of Complainant. Apart from the disputed domain names, Respondent also registered the domain name . According to the Panel, this indicates a pattern of registering domain names with the purpose of disrupting Complainant’s business.
Furthermore, Respondent was prepared to transfer the domain name in exchange of an amount of GBP 2000, which is clearly in excess of the out-of-pocket expenses for a domain name registration. According to the Panel, this is further evidence of bad faith registration and use.
As a result, these circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) 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 disputed domain names and be transferred to Complainant.
Flip Petillion
Sole Panelist
Dated: December 9, 2011
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