Scania CV AB (Publ) v. Hydro-Moto-Technika, Nina Lewandowska
Case No. D2009-1211
1. The Parties
The Complainant is Scania CV AB (Publ) of Södertälje, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Hydro-Moto-Technika, Nina Lewandowska of Poznan, Poland.
2. The Domain Name and Registrar
The disputed domain name <scania-diesel.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2009. On September 11, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 16, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 September 17, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2009.
The proceedings were subsequently suspended on September 22, 2009, following receipt of Respondent's email communication of September 21, 2009 expressing interest in settling the dispute.
However, the transfer of the disputed domain name did not occur, and on October 20, 2009, the proceedings were re-instituted on Complainant's request, citing Respondent's unwillingness in settling the matter. The due date for the Response was set for November 5, 2009.
The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on advising that the Center would proceed with appointment of the administrative panel.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on November 12, 2009. 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, which is a Swedish joint stock company founded in 1891, is the world's third largest manufacturer of heavy trucks and buses and is also a leading manufacturer of engines and service-related products. It is a global company with operations in more than 100 countries worldwide, including Poland. The Complainant has registered the trademark SCANIA (the “Trademark”) as a word mark in respect of heavy vehicles and engines in several classes in more than 150 countries, including Poland where it was renewed in classes 7 and 12 on November 13, 2007.
The Complainant has also registered the Trademark as domain name under over 150 different TLDs worldwide.
The Respondent registered the disputed domain name on May 30, 2009.
The Complainant sent to the Respondent on June 29, 2009 a cease and desist letter. Only after two email reminders did the Respondent reply, but it took no action further to its stated willingness to give up the disputed domain name.
5. Parties' Contentions
A. Complainant
(i) The Complainant contends the Trademark is a well-know mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights).
(ii) The Complainant submits that the disputed domain name is identical or confusingly similar to the Trademark and in particular, that the addition of the suffix “diesel” does not have any impact on the overall impression of the dominant part of the domain name.
(iii) The Complainant contends the Respondent has no registered trade marks or trade names corresponding to the disputed domain name nor any rights or legitimate interests in respect of the disputed domain name.
(iv) The Complainant submits that because SCANIA is a well-known trade mark, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the disputed domain name at the time of registration.
(v) The Complainant submits that the disputed domain name was registered and is being held in bad faith, the Respondent showing “no indications of any intentions to use the domain name”, and that passive holding amounts to bad faith use.
B. Respondent
The Respondent did not deny the Complainant's contentions, other than in its email communication of September 21, 2009 confirmed by a letter of same date.
It contends therein it has the authorizations of several other international automotive parts manufacturers to service their products, but does not claim any formal business relationship with the Complainant.
It admits being active in and providing diesel services, albeit solely in connection with diesel injection systems.
Further, it contends it has not used the disputed domain name.
The Respondent made no submissions in these proceedings.
6. Discussion and Findings
6.1 Procedural aspects:
The Respondent did not file any Response within the time limit set by the Center. Absent exceptional circumstances, the Respondent's failure to timely submit a Response constitutes default according to paragraph 14(a) of the Rules.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and paragraph 10(b) of the Rules also obligates the Panel to give each party “a fair opportunity to present its case”. At the same time, the Panel must ensure that the proceedings take place “with due expedition”, and extensions of time are to be granted only “in exceptional cases” according to paragraph 10(c) of the Rules.
Taking into account the communication of the Respondent on September 21, 2009, the subsequent suspension of the proceedings and their re-institution, and the fact that the Respondent did not timely or at all submit a Response, the Panel did not consider it appropriate to grant on its own motion an extension of time not requested by the Respondent.
6.2 With respect to the requirements of paragraph 4(a) of the Policy:
A. Identical or Confusingly Similar
The Complainant submits that the dominant part of the domain name <scania-diesel.com> consists of the word “scania” which is identical to the Trademark, registered by the Complainant as a trademark and domain name in numerous countries all over the world.
The Complainant also submits that the inclusion of the suffix “diesel” in the domain name is not relevant and will not have any impact on the overall impression of the dominant part “scania” of the domain name, which is also a well-known trademark in the motor industry.
The Complainant further submits that there is a likelihood of confusion including an obvious association with the Trademark.
Indeed, the Panel finds that adding the word “diesel” to the Trademark does not eliminate the similarity between the Trademark and the disputed domain name, as it merely describes a major field of the Complainant's business and therefore is not sufficient to eliminate the confusing similarity between the disputed domain name and the Trademark
It is also well-established that the specific top level of a domain name such as “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
On the evidence, the Panel accepts the contention that the Trademark is a well-known trademark, as previously recognized in Scania CV AB v. Leif Westlye,WIPO Case No. D2000-0169, and finds that the domain name <scania-diesel.com> is confusingly similar to the Trademark. Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent does not claim any registered trademarks or trade names corresponding to the disputed domain name.
It is clear from the Complainant's submissions that no licence or authorization was given by the Complainant to the Respondent to use the Trademark.
Furthermore, it can be adduced from the Respondent's only communication that it is not an authorised dealer of the Complainant's products and according to the Complainant, the Respondent never had any business relationship with the Complainant.
This case could therefore have raised a question of whether an unauthorized third party dealer in a complainant's products has a legitimate interest to use that complainant's trademark with the addition of descriptive elements as a domain name.
Paragraph 4(c)(i) of the Policy provides that a use of a domain name is legitimate if, prior to commencement of the dispute, the respondent used the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services.
Here, however there is no actual prior use of the disputed domain name by the Respondent, according to its own admission, but apparently only a passive holding of the disputed domain name. Accordingly, the above-raised question regarding unauthorized third party use need not be considered further here. There is therefore no need to find whether the use was in connection with the bona fide offering of goods or services, or not.
Not only has the Respondent shown no indication of any serious intention to use the disputed domain name, it has actually expressed a willingness to give it up, a declaration which in the Panel's view strongly suggests the lack of any right or legitimate interest of the Respondent in it.
To be complete, the Panel finds that the Respondent is neither commonly known by the disputed domain name nor is it making a legitimate noncommercial or fair use of the disputed domain name.
Thus, the Panel concludes that the Respondent has no rights or legitimate interest in the domain name and that the Complainant satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name is a combination of the words “scania” and “diesel”. The Respondent itself expressly stated that it has been operating in the sector of diesel systems “for 24 years”, that it was aware of the Complainant's products and that the disputed domain name was registered in connection with the Respondent's business of servicing in Poland the diesel injection systems manufactured by the Complainant. Therefore, it is highly unlikely that the Respondent would not have known of the Complainant's rights in the Trademark prior to acquiring the disputed domain name, since the Trademark is a well-known mark in that sector.
It is also well established since Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003, that the mere passive holding of a domain name may in appropriate circumstances constitute bad faith use, and such passive holding is precisely being complained of in this case.
Moreover, the conduct of the Respondent since replying to the cease and desist letter of the Complainant is strongly indicative of bad faith, in line with Sanofi-Aventis v. New Health Care Inc., Kevin Josh,WIPO Case No. D2008-1881, insofar as it has declared in writing to be amenable to “giving up” the disputed domain name but has not acted accordingly, thus needlessly compelling the Complainant to re-institute the suspended proceedings and prolonging the dispute to the detriment of the Complainant.
The Panel concludes in the present circumstances that the Respondent registered and is using the disputed domain name in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <scania-diesel.com> be transferred to the Complainant.
Louis-Bernard Buchman Sole Panelist
Dated: November 24, 2009
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