Nominet UK Dispute Resolution Service

Nominet UK Dispute Resolution Service

DRS Complaint No 04196

Decision of Independent Expert

1. Parties

Complainant: Scania CV AB (publ)

Country: SE

Respondent: Abdul Mayat

Country: GB

2. Domain Name

scaniaparts.co.uk

3. Procedural Background

The Complaint was validated by Nominet on 10 November 2006 and sent to the Respondent on that date by post and email to the respective contact details held by Nominet. Nominet informed the Respondent that it had 15 working days, i.e. until 4 December 2006, to respond to the Complaint.

On 16 November 2006 the Respondent filed a Response. On 17 November 2006 Nominet sent a copy of the Response to the Complainant and informed it that any Reply it wished to file should be filed by 24 November 2006. On 24 November 2006, Nominet received a copy of the Complainant's Reply, and on the same day sent a copy of it to the Respondent. The mediation process commenced thereafter on 30 November 2006 and ended on 14 December 2006 without any resolution. The Complainant was then invited to pay the requisite fee for an Expert Decision, which they did on 5 February 2007. Thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision. I responded to Nominet confirming that I was able to provide a decision.

On 12 February 2006, the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision.

4. The Facts

The Complainant is a Swedish limited liability company founded in 1891, and registered in 1962. It is a leading manufacturer of heavy trucks and buses, as well as industrial and marine engines, with operations in Europe, Latin America, Asia, Africa and Australia. It is the world's third largest manufacturer of heavy trucks, and buses within the heavy bus sector, and one of the UK's leading suppliers of heavy trucks, with a market share of 17.1%.

The Complainant is the proprietor of numerous trade mark registrations for the word mark SCANIA around the world in respect of heavy vehicles, engines and parts therefore, and 13 registrations which include the word SCANIA in the UK. In addition the Complaint has registered numerous domain names containing the word SCANIA, including two for SCANIAPARTS (scaniaparts.co.nz and scaniaparts.nl).

The Respondent registered the Domain Name on 9 July 2006. He had no authority form the Complainant to do so, and has no prior rights in the word SCANIA or SCANIAPARTS. The domain is directed to a website where the following text presently appears –

Mission

If you would like to make enquiries about the www.scaniaparts.co.uk domain, then please send an email to info@scaniaparts.co.uk

[Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture]
Created 8:56PM, Wed, 1st Nov 2006
Copyright ©2006 --- Scania Parts ---
 


Similar text appeared following registration of the Domain Name, but with the addition of the words "This is a genuine service at a very reasonable and realistic rate."

The word SCANIA, is a name for a geographical region in the south of Sweden, and there are a number of businesses that incorporate that word into their name.

The parties corresponded prior to the instigation of the Complaint, and a summary of that correspondence would be that the Complainant asserted its rights, and the Respondent defended its right to register the Domain Name, and inquired whether the Complainant would like to use the domain as a link to the parts section of its website. The content of one particular email from the Respondent to the Complainant said that he apologised for any damage to the Complainant's brand, that he had a policy of offering domains which might have a link to a known trade mark to the primary trade mark holder first, and that his "research in scaniaparts.co.uk" included a review of various other third party motor vehicle manufacturers' domains. He went on to say that he would not make any commercial use of the domain, but subsequently made an offer of a link to the Complainant's website for £35 per annum.

The Respondent is the registrant of a number of domain names, two of which include third party trade marks, including namely jaguarspecialists.co.uk and heritagemotors.co.uk.

5. The Parties' Contentions

Complaint

The Complainant asserts that it has Rights in respect of a name and mark which is identical or similar to the Domain Name and the Domain Name in the hands of the Respondent is an "Abusive Registration" as defined in the Dispute Resolution Service Policy (the "Policy").

In support of the claim to Rights, the Complainant says that it has an extensive history of trading under the mark SCANIA, that it is the proprietor of numerous trade mark registrations which incorporate that mark and further that the mark SCANNIA is a well known trade mark such that it is afforded protection by the Paris Convention and the TRIPS Agreement in respect of all goods or services regardless of those for which the mark is registered. The Complainant goes on to say that the dominant part of the Domain Name is SCANIA, which is identical to the mark in which it has rights, and the addition of the generic word "PARTS" does not prevent the Domain Name from being determined as confusingly similar to the Complainant's mark.

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that -

i) The Respondent it seeking to take commercial advantage of the value invested by the Complainant in its trade mark, evidenced by the Respondent communicating with the Complainant, to the effect that if the Respondent wished to use the domain it should contact the Respondent to agree terms. The Respondent therefore acquired the Domain Name for the purposes of selling, renting or transferring the Domain Name to a third party;

ii) The Respondent is engaged in a pattern of conduct where he registers domain names that correspond to well know names and trade marks in which he has no rights.

Response

The Respondent asserts that the rights to the "registration" are dubious because –

i) The Domain Name would not imply an association with the Complainant because the Respondent is not using the Complainant's logo.

ii) Scania is the name of a geographic region of Scandinavia.

iii) There are various companies listed whose names include the word SCANIA.

iv) There are websites with SCANIA in their domain names.

The Respondent denies that he has made any commercial use of the Domain Name. He asserts that the Respondent has not previously chosen to register the domain themselves, and that they would have done so if the domain was of strategic interest to them. He says that that the present use of the Doman Name and the associated website makes no connection to the Complainant.

He denies that he is engaged in a pattern of conduct of registering well known trade marks, and only three of the domains registered by him have links to trade marks. He asserts that he has requested permission to use these domains from the trade mark holder.

Reply

The Complainant says that the fact that the Respondent has not used the Complainant's logo on his website is of no relevance when deciding if the registration of the Domain name is abusive.

It also asserts that the fact that SCANIA is a geographical reference is of no significance in circumstances where the word has the character of a well known trade mark, and further where the addition of the word "PARTS" makes an association with the Complainant. It also says that the use of the word SCANIA by third parties in their company name does not change the rights that the Complainant has to the mark.

It denies that the failure to register the Domain Name is of significance, and asserts that it cannot be expected to proactively register all and any variations of its trade mark.

5. Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:

(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

The Complainant must make out its case to the Expert on the balance of probabilities.

Complainant's Rights

The DRS Policy defines Rights as follows –

"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"

The Complainant has clearly made extensive use of the trade mark 'SCANIA', and has used that mark such that it is likely to have created extensive goodwill therein. The Complainant is also the proprietor of numerous trade mark registrations, a number of which give rise to rights in the UK. It is clear that the Complainant therefore qualifies as having the necessary Rights in that mark.

The Policy requires such Rights to be in a name or mark identical or similar to the disputed Domain Name. The Domain Name is For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix. The comparison is therefore between 'SCANIA' on the one hand, and 'SCANIAPARTS' on the other. In my opinion the addition of the word 'PARTS' in the Domain Name make little difference to the overall impression or impact of it. I therefore determine that the Complainant has established that it has Rights in a name or mark similar to the disputed Domain Name.

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.

The Policy defines an Abusive Registration as –

"a Domain Name which either:

      i.   was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

      ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights"

and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.

The first ground of complaint relied upon by the Complainant (listed above) seems to marry up with the ground identified in the Policy at Paragraph 3(a)(i)(A), namely –

"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain name;"

In my view, it is clear from the email exchanges between the parties, that the Respondent knew of the Complainant's trade mark and reputation when it registered the Domain Name, and indeed it was the very reason that it registered the Domain Names. Notwithstanding the submissions by the Respondent, it is clear that this Domain Name could only be linked with the Complainant and its goods or services. However the question is what did the Respondent intend to do with the Domain Name, and did its conduct fall fowl of the ground for complaint identified above? In my opinion it did. The original wording on the web page to which the domain was pointing, indicates that the Registrant registered/used the Domain Name with the intention of charging either the Complainant or another party to either acquire or use it. The fact that the Registrant approached the Complainant soon after he registered it would suggest that his primary target was the Complainant.

The Registrant did not initially set out the amount of remuneration that it required from the Complainant, although it did reference £35 per annum to direct the Domain Name to the Complainant's website, after the Complainant had threatened to take legal action against the Respondent. In my opinion, and on the balance of probabilities, the Respondent intended to extract more than the sum it ultimately indicated to the Respondent that it would accept for the directing of the Domain Name, insofar as a I doubt very much that the Registrant would engage in the practice of registering domains incorporating third party trade marks, unless it intended such an exercise to be more fruitful. In any event I consider the sum that it requested from the Complainant, £35 per annum, is in excess of it's out of pocket expenses. I therefore conclude that the registration of the Domain Name was an Abusive Registration.

The Complainant relies upon a further ground of complaint which is equivalent to paragraph 3(a)(iii) of the Policy which says as follows –

"The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern:"

The Complainant has adduced evidence which identifies a number of domain names registered by the Respondent, two of which appear to contain third party trade marks. The Respondent says that he has requested permission to use these marks/domain names, although noticeably does not say whether such permission has been granted. In my view it would be a stretch to conclude that three domains (including the disputed Domain Name) creates a pattern, and furthermore the question of whether the Respondent has the right to use them (other than the disputed Domain Name) is un-decided. I therefore reject this ground of complaint.

6. Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar to the Domain Name , and that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds.

The disputed Domain Name should be transferred to the Complainant.

Simon Chapman

26 February 2006