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Scania CV AB v. J. Shera

WIPO Case No. D2001-0704

Outcome
Transfer
Domain names
scaniaengineparts.com
Complainant
Scania CV AB
Respondent
J. Shera (U.K)
Panelist
Richard G. Lyon
Decided
28 Jul 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0704.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scania CV AB v. J. Shera

Case No. D2001-0704

1. The Parties

The Complainant is Scania CV AB , a Swedish corporation with its principal

place of business in Södertälje, Sweden, represented

by Joanna Lundquist, Domain Network Stockholm AB, Stockholm, Sweden.

The Respondent is J. Shera, an individual who resides in Bradford, U.K.

2. Domain Name and Registrar

The domain name at issue (Domain Name) is: <scaniaengineparts.com>.

The registrar is Bulkregister.com, Baltimore, Maryland USA.

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received Complainant's

complaint on May 27, 2001 (electronic copy) and May 29, 2001 (hard copy). At

the Center's request the Complainant amended its complaint, with the amendment

received by the Center on June 18, 2001 (email) and June 20, 2001 (hard copy).

The Center verified that the amended complaint satisfies the formal requirement

of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the

Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental

Rules). Complainant made the required payment to the Center. The formal date

of the commencement of this administrative proceeding is June 20, 2001.

On May 29, 2001, the Center transmitted via email to Bulkregister.com. a request

for registrar verification in connection with this case. On May 30, 2001, Bulkregister.com

transmitted via email to the Center its Verification Response, confirming that

the Respondent J. Shera is the registrant, and Lee Gillett, Gillett Multimedia,

Ely, Cambridgeshire, U.K. is the administrative and technical contact.

Having verified that the complaint satisfied the formal requirements of the

Policy and the Rules, on June 20, 2001, the Center transmitted to the Respondent

and the Administrative/Technical Contact a Notification of Complaint and Commencement

of the Administrative Proceeding via post/courier, facsimile, and e-mail. The

postal address used for Respondent was as follows, J. Shera, 40 Verity Street,

Bradford BD4 6PN, U.K.

Notice was also sent by email, facsimile, and post/courier to an address obtained

at the website utilising the Domain Name, Bradford Grinders (UK), Mount Street,

Bradford, England, BD3 9SN, U.K.

Bradford Grinders notified the Center by letter that Mr. Jonathan Chera was

no longer employed by it, and that it had nothing to do with the Domain Name.

Respondent failed to respond to the Notification of Complaint and Commencement

of the Administrative Proceeding and the Center notified him of his default

on July 10, 2001, via email.

In view of the Complainant's designation of a single panelist and Respondent's

default the Center invited Mr. Richard G. Lyon to serve as a panelist.

Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality

and Independence, the Center transmitted to the parties a Notification of Appointment

of Administrative Panel on July 20, 2001. The Projected Decision Date was August 3, 2001.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and Supplemental Rules, and that

the panel has jurisdiction over this dispute.

The Administrative Panel shall issue its Decision based on the complaint, the

evidence presented, the Policy, the Rules, and Supplemental Rules.

4. Factual Background

Complainant is an internationally known Swedish company. Among its businesses

is the sale of commercial motor vehicles such as trucks and buses, and parts

and service for those vehicles. Complainant owns numerous trademarks for SCANIA,

which in the United Kingdom (where Respondent resides) is registered in Classes

12 (for "commercial vehicles, motor trucks and buses,. . ."), 7 ("parts and

fittings for vehicles; engines and motors, . . . "), and 37 (repair and maintenance

of commercial vehicles; motor trucks and buses . . ."). The SCANIA name and

mark are well known around the world in these lines of commerce, in which Complainant

has engaged for more than a century. Complainant and affiliated companies or

authorized representatives do business in more than one hundred countries. It

has authorized workshops and dealers in many countries, including the United

Kingdom. It also has registered many domain names that include the word scania.

Respondent registered the Domain Name on May 17, 2000. An Internet user who

enters the Domain Name site is transferred automatically to a website promoting

Bradford Grinders (UK) Ltd. This site is headed "All Types of Engine Spares"

and describes a company in the business of providing spare parts for "a full

range of petrol and diesel engines." Bradford Grinders lists the address given

above and includes a U.K. freephone number and website (www.bradfordgrinders.co.uk).

Neither Bradford Grinders nor Respondent is an authorized representative or

dealer of Complainant or any of Complainant's British dealers.

Complainant's counsel sent Respondent cease and desist letters on March 8 and 23, 2001.

Respondent has not replied to either letter.

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

The Domain Name is confusingly similar or nearly identical to its name and

SCANIA marks. Respondent has no rights or legitimate interests in respect to

the Domain Name. Respondent's use of the Domain Name has disrupted the business

of Complainant's authorized U.K. representatives and prevented the trademark

owner from using its mark in a domain name. Bad faith is also shown by Respondent's

registration of domain names that similarly incorporate other vehicle manufacturers'

trade names, such as <volvoengineparts.com> and <mercedesengineparts.com>

(Footnote 1).

Respondent has failed to reply to the complaint.

6. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.

These elements are as follows:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark

or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain

Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad

faith.

Complainant bears the burden of proof on each of these elements. Respondent's

default does not automatically result in judgment for the Complainant.

Identity and Confusion.

The Domain Name incorporates verbatim the Complainant's name and mark, making

confusion likely. The addition of the engineparts – one of Complainant's

principal lines of business -- to the trademark only adds to the likelihood

of confusion.

Legitimate Interest.

Complainant has not licensed Respondent to use its marks. Neither Respondent

nor his former employer is an authorized Scania dealer. Nothing in the record

suggests that Respondent has any legitimate interest in the Domain Name.

Bad Faith.

Paragraph 4(b) of the Policy sets out examples that shall be evidence of the

registration and use of a domain name in bad faith. Section 4(b)(iv) of the

Policy provides that the following will be evidence of bad faith:

"by using the domain name, you [Respondent] have intentionally attempted to

attract, for commercial gain, Internet users to your web site or other on-line

location, by creating a likelihood of confusion with the complainant's mark

as to the source, sponsorship, affiliation, or endorsement of your web site

or of a product or service on your web site or location."

Respondent’s web site automatically transfers a user to a site owned by a dealer

in vehicle parts and thus presumably a competitor of Complainant's U. K. dealers.

Respondent at one time was employed by this company. A customer seeking an authorized

Scania dealer would be very likely to use the domain name and be directed to

a competitor. It is difficult to image that Respondent intended anything other

than this result. His use as metatags of comparable combinations incorporating

other vehicle manufacturers' names is further evidence of this. Respondent has

offered no proof to the contrary. Complainant has established registration and

use of the Domain Name in bad faith.

7. Decision

For the foregoing reasons the Panel determines that the Complainant has proven

each of the three elements in paragraph 4(a) of the Policy in relation to the

Domain Name.

Pursuant to request by Complainant, paragraph 4(i) of the Policy, and paragraph

15 of the Rules, the Panel orders that the registration of the Domain Name be

transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: July 28, 2001

Footnotes:

1. Complainant submits no evidence to support this assertion. The metatags

listed at the Bradford Grinders website, to which a user is referred upon entering

the Domain Name (see above), however, contain these phrases. (back

to text)

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