Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 005546

Scania CV AB v Commercial & Equipment Finance

Decision of Independent Expert

1. Parties:

Complainant: Scania CV AB

Country: Sweden

Respondent: Commercial & Equipment Finance

Country: UK

2. Domain Name:

Scaniafinance.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was lodged with Nominet on March 17, 2008. Nominet validated the Complaint and notified the Respondent of the Complaint on March 26, 2008 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent did not submit a Response. The Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4. The Facts:

The Complainant is a well known manufacturer of heavy trucks and buses which also markets a range of financing services and has its own UK finance provider Scania Finance Great Britain Limited. It is also the owner of registered trade marks for SCANIA as a word mark in respect of heavy vehicles and engines in several classes in more than 150 countries. Among these, is a registration for SCANIA in the UK for finance and insurance services for vehicles.

On November 25, 2004 the Respondent registered the Domain Name and has used the Domain Name to offer financial services not provided by the Complainant. It offered to sell the Domain Name to a company associated with the Complainant for £125,000.

5. The Parties' Contentions:

Complainant:

The substance of the Complaint is as follows:

1. The Complainant has Rights in respect of a name or mark which is identical or confusingly similar to the Domain Name. The Complainant is a well known global manufacturer of heavy trucks and buses as well as industrial and marine engines founded in 1891. The Complainant started marketing its products in the UK in the mid 1960s. The Complainant also markets and sells a broad range of service-related products and financing services and has its own UK finance provider Scania Finance Great Britain Limited. The Complainant's trade marks include a UK trade mark for "SCANIA " registered for finance and insurance services for vehicles registered since 1986. The Complainant has registered the trade mark SCANIA as a domain name or part of a domain name in more than 220 different top level domains worldwide. The addition of the word "finance" does not have any impact on the overall impression of the dominant portion of the Domain Name.

2. The Respondent registered the Domain Name scaniafinance.co.uk on November 25, 2004 subsequent to the Complainant's use and registration of the SCANIA trade mark. The Respondent offered financial services not connected with the Complainant through the Domain Name firstly without a disclaimer and then with a disclaimer after receiving a cease and desist letter. The web site offered to provide finance in relation to the Complainant's vehicles.

3. The Complainant submits that the Respondent has no rights or legitimate interest in respect of the disputed Domain Name because (i) the Complainant has had a trade mark registration for SCANIA in the UK since 1972; (ii) the Respondent registered the Domain Name years after the Complainant registered the "SCANIA" trademarks; (iii) there is no connection between the Complainant and the Respondent (iv) the Complainant has not authorised the Respondent to use the SCANIA name; and (v) the Respondent does not appear to have any trade marks or trade names similar to the Domain Name.

4. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

5. The Respondent offered to sell the Domain Name to Scania Finance Great Britain Limited for £125,000.

6. The Respondent's web site mislead consumers looking for the Complainant. The Respondent sought to exploit the image and goodwill of the Complainant. The disclaimer put on the site after receipt of the cease and desist letter is not sufficient to prevent the Complainant's unfair advantage of the Complainant's Rights. Internet users seeking the Complainant^'s official 'Scania' website are likely to assume that the Domain Name is associated with the Complainant. This confusion is a result of the Respondent's deliberate attempt to mislead users by using a well known brand of considerable goodwill and reputation as the Domain Name.

Respondent:

The Respondent did not submit a Response.

6. Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant is the proprietor of UK registered trade marks for SCANIA including for provision of financial services in relation to vehicles. It is associated with a UK provider of financial services Scania Finance Great Britain Limited. The Domain Name consists of the Complainant's name or mark SCANIA plus the generic word "finance".

The Expert finds that the Complainant has Rights in respect of a name or mark, which is identical or confusingly similar to the Domain Name. The addition of the generic word "finance", itself an area in which the Complainant or its associated companies offer services, does not affect the distinctive part of the Domain Name, namely the Complainant's SCANIA name which is identical to the Complainant^'s trade mark. As such the Domain Name when taken as a whole is confusingly similar to a name or mark in which the Complainant has Rights.

Abusive Registration_,

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph I of the Policy defines "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."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has a relationship with the Complainant, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraph i, ii and iv which read as follows:

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

A. for the purposes 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;

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. or the purpose of unfairly disrupting the business of the Complainant;"

ii "Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant"

iv"lt is independently verified that the Respondent has given false contact details to us"

The Expert is of the opinion that the Respondent's conduct and use of the Domain Name is indicative of relevant abusive conduct. The content of the web site offering to provide financial services in relation to the Complainant's vehicles shows that the Respondent was well aware of the Rights and reputation of the Complainant in the SCANIA name. The Respondent offered to sell the Domain Name to an associated company of the Complainant for £125,000 and it is not clear why the Domain Name would be worth such a sum without reference to the value of the goodwill and reputation in the Complainant's SCANIA trade mark. There is, therefore, good evidence that the Respondent registered the Domain Name for the. purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or its associated companies for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name. As such the Expert finds that the Domain Name is an Abusive Registration under paragraph 3 (i) A of the Policy.

There is no obvious reason why the Respondent might be said to have been justified in registering the Domain Name and he has produced no evidence to counter the Complainant's allegations. Indeed the Domain Name incorporating the Complainant's trade mark has been used by the Respondent to offer services competing with financial services authorised by the Complainant. In so doing, the Respondent has arguably used the Domain Name to disrupt the Complainant's business and to confuse Internet users into thinking that the Internet business sites are connected to the Complainant (although there is no evidence of actual confusion). In view of the conclusion arrived at by the Expert under paragraph 3 (i) A of the Policy it is not necessary for the Expert to come to any conclusion on this, but in case the finding on paragraph 3 (i) A is ever questioned the Expert believes that the Domain Name is also an Abusive Registration under paragraph 3 (i) C of the Policy and since paragraph 3 is a non exhaustive list of factors the attempt to cause confusion on the Internet for commercial gain also makes the Domain Name in the view of the Expert an Abusive Registration.

Accordingly in the view of the Expert, in its registration and use of the Domain Name, the Respondent took unfair advantage of and caused detriment to the Complainant's rights. As such, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

7. Decision:

In light of the foregoing findings, namely that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, scaniafinance.co.uk be transferred to the Complainant.

Dawn Osborne Date May 13, 2008