The Complainant is Scandic Hotels AB of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Nurinet of Gyeongju-si, Gyeongsangbuk-do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with N. Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 2, 2012, the Center transmitted by email to N. Inc a request for registrar verification in connection with the disputed domain name. On February 3, 2012, N. Inc. 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”).
On February 7, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On February 8, 2012, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not submit any request with regard to the language of the proceeding.
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 February 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2012.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 14, 2012. 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 headquartered in Stockholm, Sweden and is a leading hotel chain in Scandinavia. The Complainant has over 160 hotels in the Nordic region and Northern Europe. The hotel business has been running since 1963, and since 1984 under the trademark SCANDIC. The Complainant owns and holds the trademark registrations for SCANDIC and the business registration for Scandic Hotels AB. The Complainant is also the owner of more than 100 domain names containing the terms “scandic” and “scandic hotel”. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The dominant part of the disputed domain name comprises the words “scandic” and “scandic hotel”, which are identical to the registered trademark SCANDIC and the registered business name “Scandic Hotels AB” which has been registered by the Complainant as a Community Trade Mark, as national trademarks and as domain names. The addition of the generic Top-Level Domain (gTLD) suffix “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the dispute domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent. The Respondent has no connection or affiliation with the Complainant.
The disputed domain name was registered and is being used in bad faith. A simple search in the Community Trade Mark database, Madrid Express or on Google would have disclosed the Complainant’s rights in the name “scandic”. The disputed domain name is currently connected to a website containing sponsored links, and the website has not evolved over time to purport any other intentions other than commercially benefit from its registration and use. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the Registration Agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceedings shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceedings in the event translations are required and other relevant factors.
In the present case, although the Registration Agreement for the disputed domain names was made in the Korean language, it appears that the Respondent was a party in previous UDRP proceedings which were administered in English (Philip Morris Brands Sàrl v. NURINET, WIPO Case No. D2011-2116, Google Inc. v. Noori net, NAF Claim No. 1311521 and Daimler AG v. Noori net, NAF Claim No. 1323972). Moreover, the disputed domain name consists of the English word “hotel” (and/or the Swedish word “hotell”) combined with the Complainant’s trademark SCANDIC. It is also noteworthy that the Center in preliminarily deciding to proceed with the acceptance of the Complaint in English nevertheless communicated with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean, and that it would appoint a panelist familiar with both English and Korean.
On the other hand, the Complainant does not appear to be able to communicate in Korean and therefore, if the Complainant was required to have the documents submitted translated into Korean, the administrative proceedings would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of the proceedings in this case. See Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679. B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits. C. Identical or Confusingly Similar
The disputed domain name consists of the word “hotel” and the Complainant’s trademark SCANDIC plus the descriptive gTLD suffix “.com”. The word “hotel” is descriptive for the travel services with which the Complainant’s trademark SCANDIC is associated. The addition of the word “hotel” tends, if anything, to increase the likelihood of confusion, because the word is descriptive of the business operated by the Complainant under the SCANDIC mark. See The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137; ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO,WIPO Case No. D2002-0517; Marie Claire Album S.A. v. Buy This Domain,WIPO Case No. D2002-0677. The Panel notes that the addition of letter “l” to “hotel”, whether a typographical error or the Swedish spelling of “hotel”, does not add distinctiveness to the disputed domain name.
It is also well established that the gTLD suffixes such as “.com”, “.org”, or “.net” do not affect a domain name for the purpose of determining whether it is identical or confusingly similar. See Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be deemed identical to or confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with this element, several decisions of UDRP panels have held that “[o]nce a Complainant establishes prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing.” Ets Leobert, SARL v. Jeonggon Seo,WIPO Case No. D2009-0004. See also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent has not submitted any reply to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name, was not aware of the Complainant’s trademark rights.
Bad faith can be inferred based on the fame of the Complainant’s marks in Europe and elsewhere, such that the Respondent must have been aware of the Complainant’s mark and claims of rights thereto.
As evidenced in the Complaint, at the time the Complaint was field, the Respondent was using the disputed domain name to link to other websites including travel, etc., and the website also indicated that the disputed domain name was for sale.1
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
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 be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Dated: April 4, 2012
1 While the Panel notes that the disputed domain name is currently in active, this does not change the Panel’s findings.
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