Scania CV AB (Publ) v. Private Registration Care of Thomas Rask, Valueforge Inc.
Case No. D2007-1835
1. The Parties
Complainant is Scania CV AB (Publ), Södertälje, Sweden, represented by Melbourne IT Corporate Brand Services AB, Sweden.
Respondent is Private Registration care of Thomas Rask, Valueforge Inc., Largo, Florida, United States of America, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <scania.mobi> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. On December 13, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Moniker Online Services, LLC 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”), 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 January 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2008. The Response was filed with the Center on January 8, 2008.
The Center appointed Diane Cabell as the sole panelist in this matter on January 22, 2008. 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.
On January 23, 2008 Complainant filed supplemental pleadings which were accepted by the Panel. Respondent then submitted supplemental pleadings on January 25, 2008which were also taken under review.
4. Factual Background
The trademark upon which the Complaint is based is SCANIA. Complainant Scania CV AB (Publ) owns more than 150 trademark registrations for the SCANIA mark around the world, including the United States where the mark was registered in 1969. Complainant has operations in more than 100 countries and owns more than 150 domains. Complainant was originally established in 1891 and asserts that it is the world’s third largest make for heavy trucks and the world’s third largest make for heavy bus segment. It has never given Respondent permission to use its mark.
“Scania” is the Latin character word (as commonly used in English) for “Skåne,” a populous region of Sweden. It is not infrequently used in reference to that territory and is also used as a trade name by some other companies.
The domain name, <scania.mobi>, was registered by Respondent on September 27, 2006 shortly after the launch of the “.mobi” gTLD. The “.mobi” gTLD was established to deliver mobile phone services.
Both parties acknowledge that the domain name has never been used as an active website nor has Respondent registered any other scania-related domains. There is no evidence that the Respondent made any offer to sell the domain to Complainant prior to commencement of this action.
Respondent owns several domains that include geographic terms (including <malmo.mobi> and <auckland.com>) and operates geographic portal website at “www.logicalsites.com”.
A cease and desist letter was sent by the Complainant, to the <scania.mobi> administrative contact on June 20, 2007, and a reminder of this letter was sent July 3, 2007. No response was received.
5. Parties’ Contentions
A. Complainant
The domain name in question is identical to the registered trademark SCANIA owned by the Complainant which mark, by virtue of its long-standing, global use of the mark and its premier industry ranking, has become a well-known mark.
Complainant asserts that Respondent: - has no rights or legitimate interests in respect of the domain name because the Respondent is not a representative or licensee of the Complainant and therefore no permission has been given to use the trademark; does not appear to have any prior registered rights or rights arisen out of use in the name Scania, cannot claim legitimate interest just by registering the trademark as a domain name; has chosen to register the domain name through Privacy Registration, in order to conceal his true identity, and failed to answer any of the letters from the Complainant, including the cease and desist letter.
Complainant also maintains that the domain name was registered and is being used in bad faith because the Respondent’s CEO lost a similar UDRP decision involving the mark MYFLORIDA (Florida Department of Management Services v. Thomas Rask/Logical Sites, Inc.,
WIPO Case No. D2006-1595). Further, Complainant asserts that its mark is well-known all over the world, citing previous UDRP proceedings acknowledging such and therefore should be entitled to the special rights granted under the Paris Convention and TRIPS Agreement to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). In light of the strength of the mark, Complainant asserts that there is no legitimate purpose for which Respondent could use the domain, other than to infringe on Complainant’s rights.
Complainant further points out that Respondent has not shown any intention to actually use the domain name and therefore has developed no rights from use and that this registration prevents the Complainant from reflecting the trademark in a corresponding domain name under the “.mobi” gTLD.
Finally, in a supplemental pleading, the Complainant’s counsel asserts that Respondent contacted him by telephone on December 13, 2007 after the complaint was filed but before the Response was submitted. In that call, Respondent Trask allegedly offered to transfer the domain name to Complainant for an amount of 20, 000 SEK. Complainant argues that this is in so far in excess of registration costs as to constitute bad faith.
B. Respondent
Respondent provided evidence that “scania” is a somewhat commonly-used translation of the the word “Skåne,” a region in Sweden. He directed the Panel to his business website at logicalsites.com where he advertises his services in building geographic portal websites. Links from that site to examples of his work include sheboygan.com and <kenosha.com>, each of which contains multiple links to information and commerce in those respective Wisconsin cities. Respondent argues that this is evidence of preparations for a bona fide use of the domain and points to these two domain names and identifies others (such as <malmo.mobi>) he has registered that reflect geographic identifiers.
He also disputes any suggestion that the mark owner should receive any special privileges as a well-known mark. He suggests that the mark is only well-known within a particular industry and this should not prevent others from using the term as a geographic identifier.
Respondent points out that screening a registrant’s personal identity is a common practice among domain registrants and not bad faith. He also points out that while he lost the <myflorida.com> domain dispute cited by the Complainant, he won another dispute over <heathrow.com> (Heathrow Land Company, LLP v. Rask, Inc. f/k/a Orthogonal Technologies, Inc., CPR 010) in 2000 which also shows his long-time interest in registering geographic indicators.
Respondent suggests that Complainant had every opportunity to register the domain <scania.mobi> in the months before Respondent did so.
In a supplemental response, Respondent claims that he placed the December 13 call in an effort to settle the dispute, however he did not make any offer to sell. He maintains that it was the Complainant who asked how much money Respondent would require to sell the domain.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the domain name at issue is identical or confusingly similar to Complainant’s registered mark. Respondent points out that Complainant was once know by a different trade name/trademark, Saab-Scania, however this is not relevant where the Complainant has provided evidence of multiple registrations for the single mark SCANIA that long pre-date the registration of the disputed domain name.
B. Rights or Legitimate Interests
The Panel accepts the evidence that “scania” is a translation of the geographic identifier “Skåne.” Respondent has satisfied the Panel that it has for many years operated a legitimate business activity as a developer of geographic portals. In fact, Complainant had every reason to be aware of Respondent’s active enterprise as it was featured in the 2006 WIPO proceeding that Complainant cited as evidence of Respondent’s previous bad faith. The fact that the “.mobi” domain has not yet been actively used does not negate its potential contribution to that overall enterprise. As such, in this Panel’s view, Respondent is protected by Section 4(c)(i) of the Policy, the purpose of which is to point commercial competitors toward courts of law which are far better suited to review the more sophisticated evidence and legal arguments required for an infringement assessment.
C. Registered and Used in Bad Faith
Section 4(a) of the Policy requires that Complainant prove all three elements of the proceeding. Because the Panel has determined that Respondent has a legitimate interest in the domain, there is no purpose in addressing any of the quite legitimate grounds for bad faith raised by the Complainant.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Diane Cabell Sole Panelist
Dated: February 7, 2008
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