The Complainant is Scania CV AB (Publ) of Södertälje, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Autovuokraamo H Laurila Ky / Scandia Rent of Tampere, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on February 19, 2013, 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.
The Complainant filed a suspension request on February 20, 2013, and the Center suspended the proceedings on the same date. On February 26, 2013, the Complainant filed a request to reinstitute the proceedings, and the Center reinstituted the proceedings on February 27, 2013.
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 February 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 19, 2013.
On February 28, 2013, the Respondent sent an email to the Center, and on the same date the Center acknowledged receipt of said email and invited the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the parties. On March 1, 2013, the Complainant requested a second suspension of the proceedings, and on March 4, 2013, the Center duly suspended the proceedings. During the suspension the parties exchanged emails until March 26, 2013, on which date the Complainant requested the reinstitution of the proceedings. The Center reinstituted the proceedings on March 27, 2013, and informed the parties that the new Response due date was April 11, 2013.
The Respondent did not file a formal Response. On April 15, 2013, the Center informed the parties concerning the commencement of the panel appointment process.
The Center appointed D. Brian King as the sole panelist in this matter on April 26, 2013. The Panel finds that it was properly constituted. The sole panelist 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
According to the evidence cited in and produced with the Complaint, the Complainant Scania CV AB (Publ) is a Swedish joint stock company founded in 1891 and registered as a Swedish company in 1962. Scania is a leading manufacturer of heavy trucks, buses and engines, as well as a provider of a broad range of service-related products and financing services. Among the services it offers is a vehicle rental service. The reach of the Complainant’s business extends to over 100 countries. In particular, the Complainant operates in Finland – the Respondent’s location – and maintains an extensive web site targeting the Finnish market under the domain name .
The Complainant has held a national Finnish trademark for SCANIA (the “Mark”) since January 31, 1946. Complaint, Annex 6.1. It has also held and consistently renewed trademarks for the Mark in more than 150 other countries, and has used the Mark in domain names registered under more than 150 different top-level domains worldwide. Complaint, Annex 9.
The Respondent registered the disputed domain name in June 2009. The Respondent is not affiliated with the Complainant, nor did it seek permission to register the disputed domain name. The Respondent operates a private car rental service, providing rentals of a variety of brands, including competitors of the Complainant such as Honda and Toyota. Complaint, Annex 10. The Respondent is using the disputed domain name to resolve to its official website, entitled “Scandia Rent,” distinguishable from the Complainant’s Mark on the basis of a single letter. The Respondent also operates identical websites under the separate domain names and . Complaint, Annex 10. In other words, the Respondent owns and makes use of two domain names corresponding precisely to the title of its rental service, Scandia Rent, and an additional domain name – the disputed domain name. All three domain names resolve to identical websites.
On December 11, 2012, the Complainant sent the Respondent a cease and desist letter, to which the Respondent did not respond prior to the initiation of these proceedings. Complaint, Annex 11. However, after receiving notification of the Complaint, the Respondent proposed conveying the disputed domain name to the Complainant in exchange for payment of maintenance and registration fees (by email, dated February 28, 2013) – leading to the second suspension of these proceedings on March 4, 2013. However, those discussions between the parties eventually broke down, leading to the reinstitution of the present proceedings on March 27, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Mark, SCANIA, has become well known within the heavy vehicles industry, as a result of extensive and long-term use. Such use relates to production, distribution, and advertising products and services.
The Complainant further argues that the disputed domain name is confusingly similar to its Mark, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent has registered and is using the disputed domain name in bad faith.
In particular, the Complainant alleges that the Respondent is using the disputed domain name to trade off of the Complainant’s goodwill – in an attempt to attract Internet users to its own website, for commercial gain, by creating a likelihood of confusion with Scania’s Mark in relation to the source, sponsorship, affiliation and/or endorsement of the website. B. Respondent
As noted previously, the Respondent did not file a formal Response. Paragraph 5(e) of the Rules provides that “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint.” There being no evidence supporting a finding of any such exceptional circumstances in this case, the Panel shall decide the dispute on the basis of the Complaint alone. 6. Discussion and Findings
Paragraph 4(a) of the UDRP Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The 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 respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proving each of these elements. Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel has no difficulty in concluding that the disputed domain name is confusingly similar to the Complainant’s Mark, SCANIA. As noted by the panel in Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, pairing well-known trademarks with generic prefixes and suffixes will generally not defeat a claim of confusing similarity. In the present case, pairing “Scania” with the suffix “rent” actually generates additional confusion, in view of the fact that the Complainant operates a vehicle rental service of its own. Complaint, Annex 8.1. B. Rights or Legitimate Interests
The Respondent registered the disputed domain name in June 2009. The mere registration of a domain name does not, however, confer upon the registrant a right or a legitimate interest in respect of the domain name.
The Respondent has made use of the disputed domain name in connection with the operation of the vehicle rental website to which it resolves. The Panel must thus determine whether such use suffices to confer a right or legitimate interest in the disputed domain name on the facts of the present case.
In assessing the respondent’s rights and legitimate interests in Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated,WIPO Case No. D2001-0826, the panel gave significant weight to the fact that “[t]he [r]espondent is not connected to the subject domain names either through its name or its business.” The present Panel considers this reasoning sound and particularly apposite here – where, as in Chinatrust, the Respondent failed to submit a formal Response. As put by the Chinatrust panel, “[t]he absence of a submission will not lead to a default decision, but the absence of any information may lead to inferences that support a Complainant’s case.”
While the Respondent has made use of the website to which the disputed domain name resolves, nothing in the record indicates that the Respondent has done so in any way connected to the name “Scania” itself. The disputed domain name resolves to a website entitled “Scandia Rent,” not Scania. It does not appear, on the record, that the Respondent has any registered trademarks or service marks corresponding to “Scania,” nor is there any evidence that the Respondent has been using the name in any other way that might afford rights or legitimate interests in the disputed domain name.
Notably, the disputed domain name, , does not accurately reflect either the title of the Respondent’s website to which it resolves, or the service offered therein (Scandia Rent). At the same time, the Respondent owns and operates two domain names more precisely reflecting the name of its service – and – resolving to identical websites.
Taken together, these facts undermine the existence of any rights or legitimate interests of the Respondent in the disputed domain name . In the absence of any Response contesting the matter, the Panel fails to see any legitimate connection between the disputed domain name and the Respondent’s business. The Panel is therefore satisfied, on the evidence presented, that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(i) circumstances indicating that the Respondent 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 the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the website or location.
In this case, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith.
First, at the time of registration, the Respondent knew or should have known of the Complainant’s rights in the Mark. The Complainant registered the Mark in Finland (and many other countries) long before the registration by the Respondent of the disputed domain name.
Second, as the Complaint argues, the disputed domain name resolves to the Respondent’s commercial website offering vehicle rental services under a different, but similar name (Scandia). There is no evidence that the Respondent owns any trademark or service mark for the name “scaniarent,” or any other derivation of the name “Scania.” Thus, the Respondent appears to have engaged in an intentional misspelling in registering the disputed domain name.
Third, the Respondent has no rights or legitimate interests in registering or using the disputed domain name. As already mentioned above, the Respondent operates other domain names resolving to websites identical to the one currently connected to . These other domain names correspond precisely to the actual name of the service the Respondent offers. Thus, the disputed domain name is neither the only portal to the Respondent’s business, nor an intuitive one. In light of the Respondent’s operation of and , the Panel finds it difficult to see any legitimate interest in maintaining the aberrantly spelled disputed domain name, , other than that alleged by the Complainant – attracting customers by creating a misleading association with the well-known trademark SCANIA.
Finally, the Panel finds it probative that the Respondent does not appear to provide a disclaimer on its website explaining the lack of any relationship between itself and the Complainant.
On these grounds, the Panel concludes that the registration and use of the disputed domain name were done in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a) of the Policy. The Complainant has thus established its case.
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.
D. Brian King
Sole Panelist
Date: May 10, 2013
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