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Société des Eaux de Volvic v. Volvic Village [2005] GENDND 76 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scanomat A/S v. Scanomat Administrator Domain

Case No. D2004-0932

1. The Parties

The Complainant is Scanomat A/S, Kokkedal, Denmark, represented by Internationalt Patent-Bureau A/S, Denmark.

The Respondent is Scanomat Administrator Domain, George Town Grand Cayman GT KY, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <scanomat.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2004. On November 8, 2004, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On November 15, 2004, Address Creation 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 November 16, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2004.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 21, 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

Complainant is the owner of the trademark SCANOMAT, which has been registered worldwide in countries including the European Union, Australia, China, Denmark, Norway, the Netherlands and Switzerland (see international registration No. 774243 dated January 18, 2002, and European Community trademark number 554113 dated June 6, 1997).

Complainant has registered various domain names including <scanomat.biz>, <scanomat.dk>, <scanomat.info>, <scanomat.net>, <scanomat.org> and <canomat.co.uk>.

Respondent registered the domain name <scanomat.com> on March 20, 2002.

5. Applicable Rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

“(i) the domain name at issue is identical or confusingly similar to a trademark in which the Complainant has rights; and

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

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

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for the purpose of Paragraph 4(a)(ii) above.

6. Parties’ Contentions

A. Complainant

Complainant is a Danish company specialized in manufacturing coffee brewers and other hot and cold brewers for professional use. Complainant has business in Great Britain, the Netherlands, Belgium, France, Germany and the USA, as well as exporting to distributors in more than 46 countries.

Complainant has been trading under its present name Scanomat A/S since 1991. Complainant has trademark rights to SCANOMAT registered, inter alia, in Denmark, the European Union, Australia and China as well as several other countries. According to Complainant the trademark SCANOMAT is a well-known trademark.

The grounds for the Complaint are:

(1) the domain name <scanomat.com> is identical or confusingly similar to Complainant’s trademark SCANOMAT and Complainant’s company name.

(2) Complainant states that Respondent has no rights or legitimate interests in respect of the domain name <scanomat.com> as provided in Paragraph 4(a)(ii) in connection with Paragraph 4(c) of the Policy.

At the time Complainant became aware of the registration of the domain name <scanomat.com>, it was registered by a company named Modern Limited - Cayman Web Development. This company has the same contact details as Respondent. The company Modern Limited - Cayman Web Development has been involved in a pattern of bad faith registration and use of domain names.

Despite the change of Respondent’s name from Modern Limited - Cayman Web Development to Scanomat Administrator Domain, Respondent does not appear to have any rights or legitimate interests in the contested domain name. Respondent also does not appear to be commonly known by the contested domain name.

Respondent intends to gain commercially from the domain name by having key words and links pasted on the webpage, all referring to coffee machines. Respondent makes commercial use of the contested domain name in order to divert consumers and to gain commercially by using Complainant’s well-known and established trademark in connection with identical goods.

Complainant has not licensed Respondent to use of any of its registered trademarks.

(3) Complainant states that the domain name <scanomat.com> was registered in bad faith as provided in Paragraph 4(a)(iii) in connection with Paragraph 4(b) of the Policy. Respondent has been involved in a pattern of bad faith registration and use of domain names. Due to the well-known and established status of Complainant it must be clear to Respondent that the contested domain name can only refer to Complainant. Respondent’s registration of the domain name <scanomat.com> prevents Complainant, as a trademark owner, from reflecting the mark in a corresponding domain name. Furthermore, Respondent’s use of the contested domain name is an attempt to mislead consumers and tarnish the trademark rights of Complainant.

B. Respondent

As Respondent did not submit a Response, Complainant’s contentions are uncontested.

7. Due process

Where, as in this case, Respondent does not submit a Response, the rules of due process require the Panel to verify, to the extent possible, that Respondent is aware of the present proceedings. On the basis of the file documentation, the Panel is satisfied that this is the case. Because the Center notified Respondent of the proceedings by fax, email and regular post, the Panel assumes that the Respondent has chosen not to respond.

8. Discussion and Findings

Complainant must provide evidence of all elements of Paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.

A. Trademark rights

Complainant has provided sufficient evidence of its rights to the trademark SCANOMAT.

B. Identical or Confusingly Similar

The domain name <scanomat.com> is identical to Complainant’s well-known trademark SCANOMAT. The suffix “.com” indicates that the domain name is registered in the “.com” gTLD.

C. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or a legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The domain name <scanomat.com> has been used by Respondent for a website with sponsored links to websites related to coffee and coffee machine products. These linked websites include those of Complainant’s competitors.

Respondent has neither provided evidence that it is a reseller of Complainant’s products nor that Complainant has licensed Respondent to use the trademark SCANOMAT. Even if Respondent would have been an authorized retailer of Complainant’s products, this in itself is not sufficient to give Respondent a right to use the SCANOMAT trademark as a domain name. As was held by the panels in, inter alia, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); Mikimoto (America) Co. v. Asanti Fine Jewellers Ltd., Case No. AF-0126 (eResolution April 8, 2000); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (November 14, 2000); Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (October 18, 2001); Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002); Nokia Corporation v. Wavesmultimedia (Bila Kalemba), WIPO Case No. D2002-0130 (June 24, 2002), a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. As decided by the panel in Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000): “the use of a mark as a domain name clearly goes further than what is required merely to resell products.”

In OKI Data Americas Inc. v ASD Inc., WIPO Case No. D2001-0903 (November 6, 2001) (<okidataparts.com>) the Panel held that in order to have rights and/or a legitimate interest in a domain name the reseller must actually offer the trademark goods, must use the site only for the sale of the trademark goods, must accurately disclose the relationship with the trademark holders and must not try to corner the market in similar domain names. Even if Respondent could be considered as an authorized retailer of Complainant’s products, the registration and use of the domain name at issue does not meet these standards.

Respondent has, furthermore, failed to provide evidence of any other own right or legitimate interest. The fact that Respondent’s name, according to the contact details in the WHOIS, is Scanomat Administrator Domain is insufficient in itself to create right or legitimate interest in the domain name at issue.

In light of the foregoing the Panel finds that Respondent has no rights or legitimate interests in the domain name.

D. Registered and Used in Bad Faith

Complainant is relying on Paragraph 4(b)(iv) of the Policy, which provides that sufficient evidence of bad faith may consist of:

“(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that Complainant has provided sufficient evidence in this respect. Based on the content of Respondent’s website it is clear that Respondent was aware of and knew the trademark SCANOMAT when registering the domain name <scanomat.com>. Furthermore, the sponsored links on the website indicate that Respondent has deliberately included Complainant’s trademark in the domain name at issue in order to attract business. Furthermore, Respondent, by its use of the domain name at issue, has created the (incorrect) impression of endorsement by or affiliation with Complainant. The contents of the website, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.

The public that is familiar with Complainant’s trademark - which is the public most likely to search for these websites - will expect to find under the domain name <scanomat.com> a website belonging to Complainant. The fact that Respondent is using this domain name for his own website will, therefore, misleadingly divert customers to Respondent’s website. This also further proves that Respondent has intentionally used the goodwill of Complainant’s trademark to create traffic to his website operating under the domain name <scanomat.com>. (See also e.g. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000).)

The Panel therefore concludes that there is sufficient evidence that Respondent’s registration and use of the domain name <scanomat.com> is in bad faith.

9. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the registration of the domain name <scanomat.com> be transferred to Complainant.

Wolter Wefers Bettink
Sole Panelist

Dated: January 4, 2005