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Scania CV AB v. Hong, Hee Dong [2004] GENDND 706 (23 June 2004)

1. The Parties

The Complainant is Scania CV AB, Business Communications, Sweden, represented by Fredrik Steigard, Cogent IPC AB, Sweden.

The Respondent is Hong, Hee Dong, DomainBox.com, Bukgu Daegu, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <scaniatrucks.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2004. On May 10, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On May 13, 2004, OnlineNic, Inc. d/b/a China-Channel.com 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 administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on May 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2004. The Respondent did not submit any response in the proceeding, but copied the Center on an email to the Complainant mentioning his willingness to transfer the domain name to <scania.com> and citing parts of prior correspondence with the Complainant in which he suggested to test the case in a complaint. The Center notified the Respondent’s default on June 4, 2004.

The Center appointed Dietrich Beier as the sole panelist in this matter on June 10, 2004. 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 Swedish joint stock company founded 1891 and registered as a Swedish company 1962. The Complainant is a leading manufacturer of heavy trucks and buses as well as industrial and marine engines. The Complainant also markets and sells a broad range of service-related products and financing services. Complainant is a global company with operations in Europe, Latin America, Asia, Africa and Australia, operations are based in more than 100 countries.

The Complainant has registered the trademark SCANIA as a word mark in respect of heavy vehicles and engines in several classes in more than 150 countries, among them in Korea on January 6, 1979 (Registration number 65, 347) and on October 28, 1969, in the US (registration number 879,387. The Complainant has also registered the trademark as domain name under over 150 different Tld’s worldwide.

The website connected to “www.scaniatrucks.com” shows that the domain name is being used as a search engine with sponsored links. At the top of the page one can read “This domain was registered for our future business; it is being forwarded into myhub.com: But, if you really want to use this domain, Contact Us.” If one clicks on “Contact Us” a mail generates addressed to the same email address as the registered administrative contact for <scaniatrucks.com>. At the bottom of the page, a big banner is displayed linking to DomainBox.com. This company is a platform for registration and sales of domain names, the current registered registrant for <scaniatrucks.com> is the Respondent, Hong, Hee Dong who is the CEO for the company DomainBox.com.

Complainant sent a cease and desist letter by postal mail and via email to the administrative contact of the domain name in question dated March 15, 2004. The Complainant advised the Respondent that the unauthorized use of the SCANIA trademark within the domain name <scaniatrucks.com> violated the rights in the trademark SCANIA owned by the Complainant. The Complainant requested immediate transfer of the domain name and a deadline for reply of March 25, 2004, was given.

The Complainant did receive a reply March 25, 2004, in which the Respondent claimed that he was not infringing the rights of the Complainant in the trademark SCANIA and that he intended to use the domain name <scaniatrucks.com> for his future business as stated on the website. The Respondent also admitted that he had no registered rights towards the name SCANIATRUCKS. In this response the Respondent also offered to the Complainant to buy the domain name for US$1,400. Included in this response is information of how much the administration fee is for a UDRP process, US$1,500, this being used as an argument that it would be cheaper to buy the domain name directly from the Respondent than to initiate a UDRP process. The Respondent also mentioned the possibility of initiating a lawsuit in Korea, which could last over a period for 4-5 years.

The Complainant replied to the Respondent’s offer on April 5, 2004, referring to the earlier cease and desist letter and informed the Respondent that the Complainant was not willing to buy the domain name for any price exceeding out of pocket expenses. The Complainant once again requested the transfer of the domain name. The Respondent replied on March 29, 2004, and informed that he would “prepare for next action.” An additional response was received on April 8, 2004, with a new offer, US$ 1,000. Once again the Complainant declined, with this reply the Complainant informed the Respondent that if he wasn’t willing to transfer the domain name, the Complainant was prepared to initiate a complaint using the Policy at the Center.

On April 17, 2004, the Respondent sent an email informing the Complainant that he had received an offer for the domain name and also requested an answer as to whether the Complainant would now buy the domain name or not. The Complainant did not reply to this mail. On April 24, 2004 the Complainant received an additional response from the Respondent in which he informed the Complainant that his marketing department had determined domain name transfer for <scaniatrucks.com>. An additional offer was included in this email. The Complainant was offered the opportunity to buy the domain name for a total amount of US $990. Again, the Complainant did not respond, but initiated the complaint using the Policy process at the Center on April 18, 2004.

5. Parties’ Contentions

A. Complainant

Complainant claims that the dominant part of the domain name <scaniatrucks.com> comprises the word “SCANIA,” which is identical to the registered trademark SCANIA, registered in Korea since 1979 and in US since 1969 by the Complainant. Scania has been registered by the Complainant as a trademark and domain name worldwide.

The domain name <scaniatrucks.com> is confusingly similar to the Complainant’s trademark SCANIA. The addition of the suffix “TRUCKS” does not have any impact on the overall impression of the dominant portion of the name, SCANIA, instantly recognizable as a well known trademark.

The domain name was registered on April 29, 2002. This date is subsequent to when the Complainant registered the trademark SCANIA. The trademark was registered in Korea 1979, and in the US in 1969.

There is no connection or co-operation between the Complainant and the Respondent. The Complainant has neither licensed, nor otherwise authorized the Respondent to use the trademark SCANIA in the domain name or in any other procedure.

The Complainant has made searches in relevant trademark databases and has not found that the Respondent has any registered trademarks or trade names corresponding to the domain name. The Complainant has also investigated whether the Respondent has any kind of business registered or in use under the name SCANIATRUCKS and found no trace of this. The conclusion is therefore that the Respondent has no registered rights or rights based on use, to the name SCANIATRUCKS. This has also been confirmed in the mail correspondence by the Respondent.

The Respondent, Domainbox.com, is a company with a platform for registration and sales of domain names and does not use the disputed domain name as a trademark or a service mark. The Respondent cannot be said to have started using the domain name. From information on the website it is stated that the domain name is destined for “future business.” Scania has received no proof of such future business and therefore a legitimate interest cannot exist.

The name <scaniatrucks.com> has no relevance in relation to the current contents on the website, which is a search engine with sponsored links and banners.

SCANIA is a well-known trademark. In addition, the domain name holder has clearly shown that he is aware of the Complainant’s business by choosing the addition “TRUCKS” to the trademark in the domain name.

The fact that the current website connected to <scaniatrucks.com> encourages users to contact the holder if they are interested is a presumption that there is an opportunity to purchase the domain name. This presumption has been verified in mail correspondence with the Respondent when the Respondent has eagerly offered to sell the domain name to the Complainant several times for an amount exceeding out of pocket expenses, such behavior indicates that the Respondent’s only interest is to sell the domain name. These activities support an inference that the Respondent has no legitimate interest in the domain name.

Circumstances which indicate that a domain name has been registered in bad faith is that the domain name holder 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 [it has] engaged in a pattern of such conduct” (paragraph 4(b)(ii). In this case the Respondent has previously registered and used trademarks as domain names in bad faith (see cases Karl Ochsner v. Posttech, WIPO Case No. D2001-1126, Deutsche Lufthansa AG v. Posttech, WIPO Case No. D2001-1251 and Reckitt Benckiser Inc. v. Hong Hee Dong et al., WIPO Case No. D2001-0559).

The current website connected to the domain name <scaniatrucks.com> displays a search engine with sponsored links and a commercial banner to the company DomainBox.com, for which the Respondent is CEO. Domainbox.com is a platform for registrations and sales of domain names. This is an indication that the Respondent is trying to attract visitors to the website “www.domainbox.com” using the domain name <scaniatrucks.com> and thereby generate commercial gain.

The Respondent cannot be considered to be making a non-commercial or fair use of the domain name, without intention for commercial gain, or to mislead or divert consumers or to tarnish the trademark at issue.

At the top of the website connected to the domain <scaniatrucks.com> there’s a text “This domain name was registered for our future business; it is being forwarded into myhub.com: But, if you really want to use this domain, Contact Us.” This phrase indicates that the domain name is indirectly for sale. (The website “www.myhub.com” is the same website that is connected to the domain name <scaniatrucks.com>, a search engine with sponsored links and banner to domainbox.com). The Respondent has also, on three occasions, offered the Complainant to buy the domain name for amounts exceeding out of pocket expenses, US$1,400, US$1,000 and US$990 and has also considered additional offers from other parties that are willing to buy the domain name, according to the information in the mail correspondence. In the view of the Complainant it is clear that the domain name was registered for the sole purpose of selling it to the Complainant who is the owner of the trademark SCANIA, or a competitor or a third party.

In view of the fact that the trademark of the Complainant, SCANIA, is long established and is registered as a trademark in over 150 countries, the Respondent would not be able to use the domain name without creating the impression in the minds of the public that the Complainant had licensed the said trademark to the Respondent or authorized the Respondent to register it or that the Respondent had some kind of connection with the Complainant. The trademark of the Complainant enjoys a sound reputation and is to be considered well-known. Any other domain name would have been more appropriate and conveyed the ideas of the Respondent at his website. The Respondent should have registered a domain name, which better corresponds to the content of its website. The Respondent instead chose to register a domain name, which does not seem in any way justified under the factual circumstances but rather, in the light of the fame and renown of the Complainant´s trademark and activities, seems preordained to elicit into Internet users and consumers an immediate reference to the Complainant’s activities/services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Complainant has established the fact that it has valid trademark rights for SCANIA registered for motor vehicles, in particular buses and trucks, dating back at least to 1969 in the US.

The SCANIA trademarks of the Complainant and the domain name in question <scaniatrucks.com> only differ in the additional element “trucks” in the domain name. The addition of the purely descriptive element “trucks” in the domain name does not have a relevant influence on the distinctiveness of the Element SCANIA which clearly carries the weight of the designation <scaniatrucks.com>. This is widely acknowledged by Panel decisions under the Policy (see e.g. Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530).

The Panel therefore considers the domain name in question to be confusingly similar to the trademarks SCANIA of the Complainant in accordance with paragraph 4a(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has no rights in the domain name in question, since Respondent is not a licensee of Complainant, nor has Complainant granted any permission or consent to Respondent to use the trademark SCANIA. Furthermore, Respondent has no legitimate interest in the domain name in question, since there is no indication that Respondent is commonly known by the name <scaniatrucks.com> nor that Respondent is using the domain name in question in a generic way in connection with a bona fide offering of related goods or services. The statement on the website that the domain name was registered for future business is too general to be considered a real business intention and is furthermore debilitated by the addition of “But, if you really want to use this domain, contact us.” If Respondent’s website under the domain name in question would concentrate on goods or services connected with trucks, the Panel does not exclude that Respondent could claim legitimate interests on a domain name <trucks.com>. The addition of “SCANIA,” a trademark of the complainant for buses and trucks, in the present case, however, cannot be explained by any legitimate interests of the Respondent.

The Panel therefore considers that the Respondent has no rights or legitimate interests in respect of the domain name in question in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s bad faith is established already by the fact that Respondent was involved in several UDRP proceedings either as a respondent or acting for a respondent (see cases Karl Ochsner v. Posttech, WIPO Case No. D2001-1126, Deutsche Lufthansa AG v. Posttech, WIPO Case No. D2001-1251 and Reckitt Benckiser Inc. v. Hong Hee Dong et al., WIPO Case No. D2001-0559). In all cases, the Panels found that the domain names should be transferred. This represents a pattern of conduct in registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name. Even one other case can be sufficient to establish such a pattern of conduct (see Kesko Oyj v. Jessimet Oy, WIPO Case No. D2001-0199). Herewith, the test of paragraph 4(b)(iii) of the Policy is met.

Furthermore, not only the fact that Respondent is the CEO of a company selling domain names, but the correspondence with the Complainant clearly shows Respondent’s intention to have the domain name registered primarily for the purpose of selling it to the right owner for valuable consideration exceeding out-of-pocket expenses directly related o the domain name. The fact that the Respondent did not approach the Complainant first does not change this evaluation, since Respondent did not specify his own alleged business intentions, but offered to sell the domain name for more than out-of-pocket expenses. His comparison with the fees due for an Policy proceeding, his implied threat to factually block a transfer of the domain name by initiating a proceeding in Korea which will last for up 5 years and his contention that he received another offer for the domain name are further circumstances showing his intention to browbeat the Complainant to buy the domain name for more than out-of pocket expenses. Herewith, the test of paragraph 4(b)(i) of the Policy is met.

Last, but not least, the current website connected to the domain name <scaniatrucks.com> displays a search engine with sponsored links and a commercial banner to the company DomainBox.com, for which the Respondent is CEO. Domainbox.com is a platform for registrations and sales of domain names. This is a further indication that the Respondent is trying to attract visitors to the website “www.domainbox.com” using the domain name <scaniatrucks.com> and thereby generate commercial gain. Herewith, the test of paragraph 4(b)(iv) of the Policy is met.

The Panel therefore considers the domain name in question to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 <scaniatrucks.com> be transferred to the Complainant.

Dietrich Beier
Sole Panelist

Dated: June 23, 2004