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Scania CV AB (Publ) v. Unaci, Inc. [2005] GENDND 542 (29 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scania CV AB (Publ) v. Unaci, Inc.

Case No. D2005-0585

1. The Parties

The Complainant is Scania CV AB (Publ), Corporate Relations, Södertälje, Sweden, represented by Cogent IPC AB, Sweden.

The Respondent is Unaci, Inc., Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwscania.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2005. On June 7, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On June 10, 2005, iHoldings.com Inc. d/b/a DotRegistrar.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 June 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2005.

The Center appointed Keita Sato as the Sole Panelist in this matter on July 15, 2005. 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 and legally registered as a Swedish company in 1962 (org. No. 556084-0976), claims to be the owner of the trademark SCANIA under the Swedish law and has submitted details of a number of trademark registrations in over 150 countries of the trademark SCANIA in respect of heavy vehicles and engines, and also registered the domain name including the word SCANIA in over 150 different Tld’s worldwide. All such registrations are in force under the name of the Complainant. In addition, the Complainant registered the trademark SCANIA in respect of class 7 and 12 in Panama. The website operated by the Complainant is “www.scania.com”.

The Respondent, whose address is in Panama, registered the domain name <wwwscania.com>. Since the Respondent did not reply to the cease and desist letter sent by the Complainant, and kept using this domain name for a redirection to a website of “used-truck-directory.com” under the Complainant’s contention. The Complaint sent the cease and desist letter, however, the Respondent did not reply. Then, the Complainant brought the case before the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant’s company is a leading manufacture of heavy trucks and buses, and their trademark SCANIA is also well-known almost all over the world since they registered the trademark SCANIA in over 150 countries including the United States of America and the European Union (under the CTM registration) in the related class of their goods. The Complainant also registered the domain name including the word SCANIA in over 150 different Tld’s. The domain name <wwwscania.com> registered by the Respondent, is confusingly similar with the well-known trademark SCANIA owned by the Complainant because the addition of the acronym “WWW” (world wide web) and the addition of the top-level domain name “COM” does not have any impact on the overall impression of the dominant portion of the trademark SCANIA. [the disputed domain name is confusingly similar to the trademark in which the Complainant has rights].

The Respondent used the domain name <wwwscania.com> to redirect Internet users to the website of “www.used-truck-directory.com”. This website is being used as a search engine with sponsored links connected to a variety of truck related websites. The Respondent has not been licensed to use the SCANIA mark by the Complainant; the Respondent has intentionally chosen a domain name based on a well-known brand which corresponds to mistyping, which may be expected of such names. In this case, the Respondent is using the trademark SCANIA to generate traffic to the sponsored links and through this procedure generates income for his own benefit. [the Respondent has no rights or legitimate interests].

The trademark SCANIA is such a well-known name and so obviously connected with the Complainant and its services that its’ very use by someone with no connection to the Complainant suggests “opportunistic bad faith”, citing the WIPO decision SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080, and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848. And the domain name <wwwscania.com> displays a search engine with sponsored links provided and operated by an entity called oingo.com (Applied Semantics / Google). The service is called AdSense and offered by Applied Semantics / Google, this is a revenue program which pays domain name owners for adding sponsored links to their parked domain names. A specific share is offered of all revenues generated from searches, pop-unders, pop-ups, etc. The Respondent is using the trademark SCANIA to generate traffic to the sponsored links which through this procedure, generate income for his own benefit. The Complainant submitted evidences that the Respondent committed the same type of conduct at “www.wwwhusqvarna.com” owned by the Respondent. The name HUSQVARNA is a registered trademark owned by Aktiebolaget Electrolux, well-known within the outdoor products area.

B. Respondent

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

6. Discussion and Findings

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complaint has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

As stated above, the Complainant has a number of trademark registrations of SCANIA in respect of heavy trucks and buses in 150 and more jurisdictions. It is satisfied that the Complainant has trademark rights almost all over the world. And this case is a so-called typo-squatting case; the Respondent intended to direct traffic to its own websites or sponsored websites through hyper-links. See, e.g. adidas-Salomon AG v. Domain Location, WIPO Case No. D2003-0490 (August 12, 2003), and citing cases. Many prior panel decisions have considered domain names that consist of the prefix “www” affixed to a trademark as a typo-squatting case and have concluded that such domain names are substantially similar to the relevant trademark:

CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (June 18, 2003) (<wwwamctv.com> confusingly similar to AMC for television service);

Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000) (<wwwreuters.com> confusingly similar to REUTERS);

InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (April 3, 2000) (<wwwinfospaces.com> confusingly similar to registered INFOSPACE trademark).

Other cases are listed in CSC v. Gagne, supra.

Like our colleagues, this Panel concludes that <wwwscania.com> is confusingly similar to the trademark SCANIA. It is confusingly similar for two reasons. First, “www” is the well-known acronym for “world wide web” and thus had no distinguishing capacity in a domain name context. See Reuters Limited v. Global Net 2000, Inc., supra. Second, use of “www” at the beginning of a domain name causes confusion whenever a very common and well-known typing error occurs: the typist omits the period “.” which would normally separate a domain name from the “www” field. See CSC v. Gagne, supra.

For much the same reasons, the Panel concludes <wwwscania.com> would be confusingly similar to the trademark SCANIA.

B. Rights or Legitimate Interests

Since the Respondent did not submit any evidence, the Panel could not recognize any special circumstances the Respondent has legitimate interests. As explained before, the Panel finds that there exists no rights or legitimate interests in the typo-squatting case. Based on the case file, the Panel concludes that the Complainant has met the second condition under the Policy.

C. Registered and Used in Bad Faith

The Panel concludes that the domain name in question was registered and is used in bad faith for two reasons.

First, the Respondent has registered the domain name in bad faith because the Respondent could easily recognize that SCANIA is a well-known trademark because of the trademark registration of the trademark SCANIA in Panama, and of their publication, website and so on. The Respondent connected its domain name to truck parts related websites. This means the Respondent has enough information on automobile and its parts to know what is suggested by the word SCANIA. In addition, the domain name is so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith. See, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (May 17, 2000), Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000).

Second, the aim of registration and use of the Respondent’s domain name <wwwscania.com> is receiving commercial gain from the websites connected to the domain name in question. The Complainant did not submit any evidence which shows the Respondent has gained commercial profit. However, the Panel could interpret evidence submitted by the Complainant to indicate that the Respondent receives compensation for the listings and links made by the Respondent. In a WIPO decision, the Panel concluded, “The Panel interprets this to mean that Respondent receives compensation for the listings and links that it includes in its search results and/or for hits on the sites Respondent references. The Panel considers such use to fall squarely within the terms of paragraph 4(b)(iv)”. See, Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911 (January 19, 2005). This Panel follows the same view of our colleague, and concludes that the domain name <wwwscania.com> was registered and is used in bad faith.

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, <wwwscania.com>, be transferred to the Complainant.

Keita Sato
Sole Panelist

Dated: July 29, 2005