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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scania CV AB v. Leif Westlye
Case No. D2000-0169
1. The Parties
The complainant is Scania CV AB, a corporation organised under the laws of Sweden, whose principal place of business is 151 87 Södertälje, Sweden, represented by Domain Network Sweden AB, Att: Carol Spendilow, Box 5590, 114 85 Stockholm, Sweden.
The respondent is Leif Westlye, of Lillhagsvägen 76, Hisingsbacka 42243, Sweden.
2. Domain Name and Registrar
The domain name at issue is <scaniabilar.com>, and the registrar is Network Solutions, Inc., of 505 Huntmar Park Drive, Virginia 20170, USA.
3. Procedural History
The complaint was submitted on March 16, 2000. A timely response was submitted to and received by WIPO on April 23, 2000. George R. F. Souter was appointed as a sole panelist on May 2, 2000.
4. Factual Background
The complainant claims to be the owner of the trade mark SCANIA, and has submitted details of a number of trade mark registrations in Sweden and USA of the trade mark SCANIA in, inter alia, classes 7 and 12, all of which are in force and in the name of the complainant. It has also submitted details of registrations in Sweden of the trade names Scania-Bilar i Stockholm AB, registered on February 2, 1998; Scania-Bilar Väst AB, registered on February 17, 1998; and Scania-Bilar Syd AB, registered on June 16, 1998.
The respondent registered the domain name <scaniabilar.com> on November 5, 1998.
The complainant’s representative had correspondence with the respondent concerning the complainant’s objection to the respondent’s registration of the domain name <scaniabilar.com>. In reply to the complainant’s representative’s statement that: "My client considers naturally that it would be best to settle outside the Courts and would like to know what you consider to be a fair price for the domain name." ("Min kund ser givetvis helst att detta ärende görs upp utanför domstol och vill gärna veta vad för belopp Du tycker är rimlig ersättning for domännamnet" ), on February 28, 2000 the respondent replied by e-mail to the complainant’s representative: "I believe that 100,000 SEK is a fair price for the domain name." ("Jag tycker att 100.000 SEK är en rimlig ersättning för domännamnet.").
5. Parties’ Contentions
The complainant claims that it has "spent substantial time, effort and means advertising and promoting the Scania portfolio of trademarks throughout Scandinavia and the world. As a result the Scania Mark has become famous and gained a reputation through use, thus Scania has gained an enormous amount of goodwill in the mark." The complainant also contends that "it is highly likely that a Scandinavian Internet user seeking information about purchasing cars from SCANIA would try SCANIABILAR.COM believing it to be an official SCANIA web site".
The complainant seeks either cancellation of the domain name registration, or its transfer to the complainant.
The respondent claims that Scaniabilar is not confusingly similar to SCANIA, and that "Scania is an old county name in Scandinavia and is used by many companies in different combinations", and submitted a number of examples, namely Scania-Metall K/B, Scania Wildlife Park , Scania Futura and Scania Bridgekonsult. The respondent states that the purpose of the domain name registration is "to use it as an advertising page for people in Scandinavia to buy and sell new or used cars".
6. Discussion and Findings
The word SCANIABILAR is composed of the word SCANIA and the word BILAR, which is the Swedish word for "cars".
The respondent’s contention that "Scania is an old county name in Scandinavia" is accepted by the Panel. This is confirmed by "Stora svensk-engelsk ordbok", "A comprehensive Swedish-English Dictionary", published by Esselte Studium AB, 1988, which gives the English translation of the historic southern Swedish area known in Swedish as "Skåne" as either "Skåne" or "Scania".
For the complainant 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 complainant 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.
The language employed, namely the word "and" at the end of paragraphs (i) and (ii), makes it clear that the tests in all three paragraphs (i), (ii) and (iii) must be met for the complainant to succeed. Previous Administrative Panel Decisions have, uniformly, followed this interpretation. Further, the word "and" in paragraph (iii) requires that both the domain name registration has been registered in bad faith, and that it has been used in bad faith, and the Administrative Panel, in Case No. D99-0001 so decided.
In connection with Paragraph 4a(i), the Panel considers that SCANIABILAR is confusingly similar to the trade mark SCANIA in connection with trade in motor vehicles, BILAR merely adding to SCANIA the standard Swedish word for cars.
As the complainant has substantial trade mark rights in the mark SCANIA, the Panel considers that the test of Paragraph 4a(I) has, accordingly, been met.
In connection with Paragraph 4a(ii), Paragraph 4c of the Uniform Domain Name Policy provides an aid to interpretation. Paragraph 4c(i) advises respondents that their rights or legitimate interests to a domain name for the purposes of Paragraph 4a(ii) would be demonstrated by "before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name … in connection with bona fide offering of goods and services." Paragraph 4c(iii) alternatively advises respondents that their rights or legitimate interests to a domain name for the purposes of Paragrah 4a(ii) would be demonstrated by "making a legitimate … fair use of the domain name, without intent for commercial gain to misleadingly divert consumers …"
In the Panel’s opinion, the use of the expression "bona fide" in Paragraph 4c(i) is sufficient to prevent a respondent who knowingly adopted another’s well known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use the domain name in connection with the offering of goods or services prior to notice of a dispute.
The Panel accepts that SCANIA is a well known mark in the motor industry, particularly in Sweden, and, accordingly takes the view that the respondent would have been unlikely to have been unaware of the fame of the complainant’s mark SCANIA in the motor industry before adopting the name.
Further, the Panel notes that the companies whose names were brought forward as examples of coined words prefixed Scania are all located in Skåne (Scania), and that the respondent, whose address is in the Gothenburg region and not in Skåne (Scania) has advanced no reason why the connection to the geographical region of Skåne (Scania) was adopted by him. Further, none of these companies cited by the respondent as examples of coined words prefixed Scania appear to have any obvious connection with the sale of motor cars.
In connection with paragraph 4a(ii), consequently, the Panel decides that the test of absence of rights or legitimate interests in respect of the domain name has been met.
In connection with Paragraph 4a(iii), the Panel follows the reasoning of the Panel in Case No. D2000-0102, in which it considered the question of a well known mark in connection with the mark NOKIA, and concluded: "The trademark NOKIA is currently enjoying such fame internationally that it cannot reasonably be argued that Respondent could have been unaware of the trademark rights vested therein when registering the Domain Name." The Panel, as stated above in connection with the test of Paragraph 4a(ii), takes the view that the respondent cannot reasonably argue that he was unaware of the trade mark rights vested in the complainant when registering the domain name <scaniabilar.com>.
The Panel, accordingly, finds that the domain name <scaniabilar.com> was registered by the respondent in bad faith.
The question of use in bad faith has been considered by the Panel on a number of occasions, and the Panel has consistently taken the view that an offer by a respondent to sell the domain name in dispute to a complainant for a figure substantially in excess of expenses incurred by the respondent in registering the domain name constitutes use in bad faith. The panel regards the figure of 100,000 SEK as unjustifiably excessive in the present case, and, accordingly finds the use of the domain name <scaniabilar.com> by the respondent to have been use in bad faith.
The Panel is satisfied that the three tests of Paragraphs 4a(i), 4a(ii) and 4a(iii) of the Uniform Domain Name Dispute Resolution Policy have been met, and, accordingly, requires that the registration of the domain name <scaniabilar.com> be transferred to the complainant.
George R. F. Souter
Dated: May 16, 2000