The Complainants are Scout24 Holding GmbH of München, Germany (Complainant I) and Scout24 International Management AG of Baar, Switzerland (Complainant II), represented by Zulauf Bürgi Partner, Switzerland.
The Respondent is Nexmedia GmbH of Sursee, Switzerland, represented by Lustenberger Rechtsanwälte (Attorneys), Switzerland. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2012. On July 4, 2012, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain names. On July 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.
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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 31, 2012, then extended to August 10, 2012, with the agreement of the Complainant. The Response was filed with the Center on August 9, 2012.
Due to the existence of a parallel complaint for similar domain names in “.ch”, the appointment of the Panel was postponed until the result of the conciliation conference in those parallel proceedings were available. This procedure was then suspended for an additional 30 (thirty) days, in agreement of the parties, to await the result of discussions in the parallel “.ch” proceedings. The present proceedings were re-instated on August 30, 2012, failing an agreement of the Parties in the parallel “.ch” procedure.
The Center appointed Gérald Page as the sole panelist in this matter on September 25, 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 dispute concerns the disputed domain names and .
Complainant I owns the following trademarks :
- Swiss trademark no. 586936 FRIEND SCOUT, priority date November 14, 2008;
- Swiss trademark no. 564340, DER SCOUT, priority date June 21, 2007;
- German trademark no. 3020080717866, FRIEND SCOUT, priority date November 14, 2008;
- CTM trademark no. 06052872, DER SCOUT, priority date June 29, 2007;
- CTM trademark no. 007390198, FRIEND SCOUT, priority date November 13, 2008.
Complainant I further owns several Swiss, German and EU trademarks containing the word element “scout”. It also owns several such trademark registrations in the United States of America, Austria, the Benelux, as well as in several international registrations.
It owns in particular the Swiss trademark DATINGSCOUT24, no. 474819, registered on February 4, 2000.
Although not mentioned in the Complaint, the Panel is also aware that the Complainants own several Swiss trademarks for SCOUT24, for example, no. 521621, registered on January 29, 2004 and no. 552203, registered on August 2, 2006, see Scout24 Holding GmbH und Scout24 International Management AG v. Roland Hirschi, WIPO Case No. DCH2012-0010.
Complainant II’s corporate name is “Scout24 International Management AG”.
In the disputed domain name , the word “huren” means “whores” in English. In the disputed domain name , the word “seitensprung” means in the broad sense “adultery” in English, or, more generally, having sexual relations outside marriage. 5. Parties’ Contentions A. Complainants
The Complainants contend that these words (“Huren” and “Seitensprung”), belonging to the common vocabulary, are descriptive for the offered services, and therefore have no distinctive value.
The content of the Respondent’s websites accessed through the disputed two domain names contain pictures and service offers clearly corresponding to the meaning of the words “huren” and “seitensprung”.
The Complainants also contend that, next to the descriptive words, the word “scout” creates confusion and are therefore confusingly similar to the Complainants’ trademarks, in particular FRIEND SCOUT, in which they have exclusive trademark rights.
The Complainants contend that the Respondent does not possess any rights or legitimate interest with respect to the disputed domain names. Recognizing that the goods and services using the names are already offered by the Respondent, Complainants allege that their use is not done on a bona fide basis.
Furthermore, the Respondent and/or its offered services were not known before under the name “scout”.
The Complainants are using their trademarks containing the word “scout” as well as Internet portals since over 10 years, while the Respondent offers its services since only very recently.
The Complainants contend that the Respondent has no license, permission or authorization to use the disputed word “scout” and therefore no legitimate interest to do so. Such use is according to the Complainants only justified by the Respondent’s awareness of the success of the Complainant’s friendship and partner portals and .
As a consequence, the Complainants contend that the disputed domain names have been registered and are used in bad faith by the Respondent.
In particular, they suggest that the Respondent is diverting Internet users to its own website who are searching for the services of the Complainants. The Complainants allege that the use of the disputed names for the purpose of offering sexual intercourse and prostitution is a sign of bad faith.
Therefore, the Complainants request the transfer to Complainant II of the two disputed domain names. B. Respondent
The Respondent does not challenge the ownership of the Complainant I’s trademarks. It contends, however, that such trademarks are weak since out of 76 trademarks totally registered in Switzerland containing the word “scout”, as many as 28 are not owned by Complainant I but by many other trademark holders, this also within the same trademark categories as those of Complainants.
The Respondent further contends that, since the word “scout” is a common word, it would have been for the Complainants to bring specific evidence of its distinctiveness. It also raises the fact that the public awareness of the trademark survey produced by the Complainants (Annex 9) only relate to the public awareness for the web portals “Autoscout 24”, “Immoscout24” and “Jobscout24”. The Respondent also underlines that the word “scout” itself is common and only generic and descriptive generally of a search over the Internet. Since the present case does not consider domain names using the suffix “24” to the word “scout”, as in most of the Complainant I‘s trademarks, the trademarks which do not contain the suffix “24” have no more different distinctive value than the word in the disputed domain names.
The Respondent stresses that it effectively uses the two web portals and the two disputed domain names in its commercial activities. It has therefore a legitimate interest in their use. It contends that even though pornography is not one of the most moral or reputable businesses, it represents an important economic activity and that therefore, it must be also considered as a bona fide use of the domain names.
Finally, the Respondent underlines that the beginning of the domain names “huren” (“whores”) and “Seitensprung” (“adultery”) obviously target very specific and different user groups, with the effect that it cannot attract traffic from the Complainants’ web sites. The Respondent admits that there might be an issue if it had used the word “scout24”, but this is irrelevant in the present case since only the generic term “scout” is used and for completely different services. Since the Respondent has not intentionally attempted to attract Internet users on its websites for commercial gain, it cannot have acted in bad faith. 6. Discussion and Findings A. Identical or confusingly similar
None of the disputed domain names is identical with any of the trademarks owned by the Complainants.
One must therefore determine whether they are confusingly similar. The only part of the disputed domain names which is identical is the word “scout”. The word “scout” as shown by the various definitions contained in common dictionaries, is essentially descriptive. The question is whether this essentially generic and descriptive word has acquired, in the present circumstances, a distinctive force, by itself. The Panel finds that today the word “scout” is widely used in the Internet to signify specific search activities. It is however just as often used by trademark owners other than the Complainants, and the word, by itself, is not perceived as more than pointing to specific search activities. It is the Panel’s view that to become distinctive, the word must be combined with a pre- or a suffix enabling the combination to acquire distinctive force as a name. This distinctive effect could be also achieved by other circumstances, such as the identity or similarity of products and services or through a combination of word and image.
“Scout24” has probably acquired such a distinctive force. However, this is irrelevant in the present case since only the word “scout” and not the suffix “24” is concerned. As the Respondent stresses, the trademark survey provided in the file by the Complainants extends precisely to the word “scout24” and not to the word “scout” only.
The exhibits to the case do not show any similarity in the combination of text and images.
Without the suffix “24”, it could be possible that the words “Friend Scout” possesses such distinctiveness. However, if this were to be assumed, the same would apply for the words “hurenscout” or “seitensprungscout” which, due to the more immediate representations they trigger in the mind of the relevant public, would also have a distinctive effect. And if it does, one would logically have to accept that the domain names in dispute are not confusingly similar due to the perceived impact of their prefixes “huren” and “seitensprung”.
Based on the foregoing, the Panel concludes that the Complainants’ trademarks consist of two common words ”Friend” and “Scout”, or “Der” and “Scout”, or of a common word and numbers(s) “Scout” and “24”, - the Complainant has failed to prove the first element of the Policy (see Mondial Assistance S.A.S. v. Compana LLC,WIPO Case No. D2007-0965). 7. Decision
For the foregoing reasons, the Complaint is denied.
Gérald Page
Sole Panelist
Dated: October 29, 2012
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