The Complainant is Scania CV AB (Publ) of Södertälje, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Ahmad Tehrani of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2014. On March 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 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 March 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on April 17, 2014. 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 a manufacturer of heavy trucks, buses and engines. It is present in more than 100 countries including in Iran, were it operates through its authorized dealers.
The Complainant is the owner of several trademark registrations for SCANIA, including the United States trademark No. 879387, registered on October 28, 1969, in classes 7, 12, 22 and 27; the Community trademark No. 002896215, registered on January 22, 2004, in classes 7, 12, 36, 37 and 39.
The Complainant is also the owner of a number of domain names consisting in or comprising SCANIA, including , registered on March 8, 1996, and .
The disputed domain name was registered on October 1, 2013. 5. Parties’ Contentions A. Complainant
The Complainant states that, due to the extensive and long-term use of SCANIA in connection with the products and services of the Complainant, as well as the tremendous costs incurred by the Complainant for the production, distribution and advertising of SCANIA products and services, the trademark SCANIA has acquired the status as a well-known trademark within the heavy vehicles industry.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark SCANIA as the addition of the suffix “naseri”, which could be a surname, and of the top-level domain “.com” does not have any impact on the overall impression of the dominant part of the name, SCANIA, which is instantly recognizable as a world famous trademark.
The Complainant asserts that it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name or anything that would suggest that the Respondent has been using SCANIA in any other way that would give it any legitimate rights in the name. The Complainant infers that, consequently, the Respondent may not claim any rights established by common usage.
The Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name is being redirected it to a website operated by the Respondent publishing the title “Scania Nazareth Vaden” and promoting a company called “Vaden Original”, which appears to provide repair services for several different brands, including many of the Complainant’s main competitors such as “Volvo” and “Renault”. The Complainant underlines that, based on the website currently published at the disputed domain name, the entity which operates it appears to be a Scania spare parts importer.
The Complainant asserts that the Respondent is not a an authorized dealer of the Complainant and highlights that, on the website to which the disputed domain name resolves, the Respondent publishes the SCANIA logotype and links leading to third party websites, some of which promote competitors of the Complainant.
The Complainant also notes that the Respondent is not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant and states therefore that it conveys the false impression that the Respondent is an authorized dealer of the Complainant’s products.
As to the bad faith requirement, the Complainant states that the Respondent registered the disputed domain name, without having received any authorization from the Complainant, due to the considerable value and goodwill of the trademark SCANIA.
The Complainant contends that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to commercial websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website to which it resolves, as the Respondent is representing itself as an authorized dealer of the Complainant’s products and linking to third party websites, claiming that it is the “Scania Nazareth Vaden, only representative in Iran” without publishing any disclaimer as to the non-existing relationship with the Complainant.
The Complainant also informs the Panel that it sent a cease and desist letter to the Complainant but received no reply from the Respondent and highlights that the failure of the Respondent to respond to the letter of the Complainant further supports an inference of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name entirely reproduces the Complainant’s registered trademark SCANIA with the addition of the word “naseri” and the generic Top-Level Domain (gTLD) “.com”. For the purpose of determining identity or confusing similarity in UDRP proceedings, the gTLD does not generally need to be considered.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
Moreover, in the present case, the association of SCANIA with the term “Naseri”, which could be a surname as highlighted by the Complainant, is apt to induce Internet users to believe that the disputed domain name is owned by the Complainant and/or is used to promote the Complainant’s business through a particular Iranian dealer.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark SCANIA according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent, which has not responded to the Complaint, has failed to demonstrate any rights and/or legitimate interests in the disputed domain name.
Based on the Complainant’s submissions, which have not been contested by the Respondent, the Respondent is not an authorized dealer of the Complainant and has not been authorized to use the trademark SCANIA. In addition, besides the references made on the web site to which the domain name resolves, to “Scania Nazareth”, there is no evidence showing that the Respondent Ahmad Tehrani might be commonly known, as an individual or organization, by the disputed domain name or by a name corresponding to it.
According to the WIPO Overview 2.0, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets certain requirements (see the leading case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), including the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.
In the case at hand, the screenshots submitted by the Complainant and not challenged by the Respondent show that the disputed domain name has been redirected to a website which promotes the resale of SCANIA spare parts but as well as of “Vaden” compressors and publishes links to third party commercial websites, including websites of competitors of the Complainant.
The Panel finds that such use of the disputed domain name does not constitute either a bona fide offering of goods or service or a legitimate noncommercial or fair use of the disputed domain name.
Therefore, the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that, in light of the well-known character of the trademark SCANIA of the Complainant, recognized also in many prior UDRP decisions (amongst others Scania CV AB v. Leif Westlye,WIPO Case No. D2000-0169), the Respondent was or ought to be aware of the Complainant’s trademark at the time of the registration of the disputed domain name. In addition, in view of the pointing of the disputed domain name to a website featuring the Complainant’s trademark and promoting the sale also of SCANIA spare parts, the Panel notes that the Respondent was very likely aware of the Complainant’s trademark.
As to the use of the disputed domain name, the Panel finds that, in light of the Respondent’s redirection of the disputed domain name to a website promoting the sale of purported SCANIA products together with other parts and products of competitors of the Complainant, the Respondent has registered and used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website and of the products promoted therein by the Complainant according to paragraph 4(b)(iv) of the Policy.
The Panel also finds that the Respondent’s failure to respond to the Complainant’s cease and desist letter and to the Complaint is an additional element evidencing the Respondent’s bad faith.
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy. 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.
Luca Barbero
Sole Panelist
Date: May 1, 2014
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