WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scania (Great Britain) Limited v. Paul Harris, International Slate Supplies Ltd

Case No. D2021-1876

1. The Parties

The Complainant is Scania (Great Britain) Limited, United Kingdom, represented by Shoosmiths LLP, United Kingdom.

The Respondent is Paul Harris, International Slate Supplies Ltd, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <webuyanyscania.com> is registered with 123-Reg Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 201, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 22, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules until July 19, 2021. The Respondent did not submit any formal response but sent an informal email to the Center on July 21, 2021. Accordingly, the Center commenced the Panel Appointment Process on July 21, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on July 27, 2021. 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

The Complainant is a subsidiary of Scania CV Aktiebolag (“Scania CV”). Scania CV is a supplier of trucks, buses, coaches and engines for industrial and marine applications and the Complainant is the official United Kingdom importer of SCANIA-branded vehicles, vehicle parts and accessories. In 2020, the Complainant’s share of the United Kingdom heavy truck market was 18.2 per cent and its share of the combined bus and coach market was 10.1%.

The Complainant is a licensee of the trade marks of Scania CV, which include European Union Trade Mark, registration No. 002896215, for SCANIA in classes 7, 12, 36, 37, and 39, registered on January 22, 2004.

The disputed domain name was registered on July 21, 2017. As at July 30, 2019, the disputed domain name resolved to a landing page containing an advertisement for third party software, which the Complainant says, was created by the Registrar. At the time of the Decision, the disputed domain name does not resolve to an active website.¹

On March 26, 2021, the Complainant’s representatives sent a claim letter to the Respondent requesting a transfer to their client of the disputed domain name. On April 6, 2021, the Respondent replied, acknowledging that it owned the disputed domain name but explaining that it was not trading under it, nor had it established a website for it. The Respondent added that: “Your demand to take ownership of the domain without any form of compensation is quite insulting considering the domain wasn’t bought by your client initially. We are willing to part with the domain on the condition that we are compensated for it”. In circumstances more particularly set out below, the Complainant says that the Respondent subsequently indicated he would be prepared to accept GBP 30,000 plus Value Added Tax (“VAT”) in exchange for transferring both the disputed domain name and another domain name owned by him, namely <webuyanyscania.co.uk> (collectively referred to below as “the domain names”) to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to the SCANIA trade marks licensed by it from Scania CV, full details of one of these marks having been set out above, and says that SCANIA is the dominant feature of the disputed domain name, and that the disputed domain name is accordingly conceptually similar to those marks.

The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Despite holding the disputed domain name for almost four years, there is no evidence that the Respondent has used it, or has made demonstrable preparations to use it, in connection with a bona fide offering of goods and services. Prior to the Respondent having notice of this dispute, the disputed domain name was not being used by the Respondent and resolved to a landing page supplied by the Registrar.

The Respondent is not commonly known by the disputed domain name. His business trades under the name “International Slate Supplies Limited” and does not trade or otherwise use the name “Scania”, nor has he acquired any registered or unregistered trade mark rights in this word, nor is he making any legitimate noncommercial use of the disputed domain name. The Respondent intends to gain commercially from his registration of the disputed domain name and its composition is likely to lead Internet users to believe that the Respondent is somehow affiliated with or licensed or otherwise authorized by, the Complainant or by Scania CV.

Use of the disputed domain name to resolve to a parked page does not represent a bona fide offering of goods and services as the links seek to capitalize on the reputation and goodwill of the Complainant and Scania CV.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered or acquired primarily for the purpose of selling it to the Complainant or to Scania CV for a sum in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Factors which indicate this include the fact that the SCANIA brand is known all over the world and it is therefore very likely that the Respondent would have had knowledge of the Complainant’s SCANIA marks as at the date of registration. Moreover the SCANIA marks are very distinctive and the Respondent also registered the domain name <webuyanyscania.co.uk> on the same day as the disputed domain name. The simultaneous registration by the Respondent of the domain names, without making use of either of them, demonstrates the Respondent’s intention to prevent the Complainant and/or Scania CV from reflecting the SCANIA marks in a domain name and evidences a clear pattern of conduct on his part.

In his email to the Complainant’s representatives dated April 6, 2021, the Respondent indicated that he expected to be compensated in exchange for the transfer of the disputed domain name to the Complainant. During a subsequent without prejudice call on April 20, 2021, the Respondent offered to transfer the domain names to the Complainant in return for payment of GBP 10,000. Subsequently, the Respondent wrote to the Complainant’s advisors on May 10, 2021 and indicated that he would accept GBP 30,000 plus VAT in return for a transfer of the domain names. Whilst the Respondent’s letter was written without prejudice, the Complainant is entitled to rely on this correspondence to establish evidence of bad faith; see, for example, Giorgio Armani S.p.A. v. Yitao/ Apex Laboratories Limited, WIPO Case No. D2013-2060. The sums requested by the Respondent are far higher than its out-of-pocket expenses and illustrate the Respondent’s desire to sell the disputed domain name for valuable consideration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions save that, on July 21, 2021 he sent an email to the Center stating; “Our argument stands that we should be financially compensated for the domain that we purchased and held, and did not trade under”.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant has provided details of the registered trade marks for SCANIA which it licenses from its parent company, including the trade mark in respect of which full details have been provided above. It has thereby established its rights in this mark.

As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s SCANIA trade mark in full, preceded by the words “webuyany”. These additional words do not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

So far as the first circumstance is concerned, section 2.2 of the WIPO Overview 3.0 provides examples of non-exhaustive examples of prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that “[w]hile such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. Set against this standard, use of the disputed domain name simply in order to resolve to a landing page does not constitute use, or preparation to use, the disputed domain name in connection with a bona fide offering of goods and services, not least having regard to the Complainant’s evident motive for registering the disputed domain name, which is discussed further below. See also Telstra Corporation Limited v. Omrite Pty Ltd, WIPO Case No. D2016-2021.

So far as the second circumstance is concerned, there is no evidence that the Respondent has been commonly known by the disputed domain name. Nor does the use of the disputed domain name to point to a landing page fall within the third circumstance as it cannot be described as making a legitimate noncommercial or fair use of it.

Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests.

The Respondent has not put forward any positive case in this respect, having asserted only that he is not using the disputed domain name, and that he wishes to be compensated for any transfer of it to the Complainant; indeed given the facts as set out above (including holding the .co.uk variation of the same), this seems to have been his primary motivation.

This is insufficient to meet the burden of production and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, without limitation, circumstances, which might evidence bad faith registration and use of a domain name. The circumstance set out at paragraph 4(b)(i) of the Policy, in summary, is if a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

The Complainant has asserted that the Respondent was aware of it and its SCANIA marks as at the date of registration of the disputed domain name and registered it in order to sell it at a profit to the Complainant. The Respondent has not denied that this is the case. The Complainant has additionally claimed that, during a telephone call with the Complainant’s representatives on April 20, 2021, the Respondent sought GBP 10,000 for the transfer of both the disputed domain name and of the co.uk variation and, by letter dated May 10, 2021, he raised his price to GBP 30,000 plus VAT for the transfer of these domain names. Whilst the Respondent’s letter was referred to in the Complaint, a copy of it was not in fact provided by the Complainant. However, the Respondent has not contradicted the Complainant’s assertions and the Panel proceeds on the basis that the Complainant has correctly stated the Respondent’s offers. Moreover, these assertions are consistent with the Respondent’s email to the Center dated July 21, 2021 that; “Our argument stands that we should be financially compensated for the domain that we purchased and held, and did not trade under”. The Respondent’s letter was apparently written intended to be without prejudice but the Panel agrees with the Complainant’s submission that it is permissible for a panel to consider the contents of such a letter in order to determine whether a respondent is acting in bad faith; see Giorgio Armani S.p.A. v. Yitao/ Apex Laboratories Limited (supra).

As the Respondent has not made any suggestion that the domain names were acquired for a legitimate purpose, the only plausible explanation for his registration of the disputed domain name can have been in order to sell it at a profit to the Complainant – which he in fact tried to do. The Respondent’s conduct therefore falls within the circumstance of bad faith registration and use described at paragraph 4(b)(i) of the Policy.

The Panel considers, additionally, whether the currently inactive status of the disputed domain name amounts to bad faith use under the doctrine of passive holding. The factors usually considered material to such an assessment have been set out in a number of earlier decisions of UDRP panels including, by way of example, in Johnson & Johnson v. Daniel Wistbacka, WIPO Case No. D2017-0709. Save that the Respondent has not taken steps to conceal his identity, the considerations usually applied by UDRP panels point to the Respondent’s passive holding of the disputed domain name being in bad faith. Specifically, the Complainant’s SCANIA mark is distinctive and well-established, the Respondent has failed to provide any evidence of actual or contemplated good-faith use.

For the above reasons, the Panel therefore finds the Respondent to have registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <webuyanyscania.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: August 9, 2021

¹ As outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly attempted to visit the Respondent’s website and established that the disputed domain name does not presently resolve to an active website.