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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Domaincar

Case No. D2006-0631

 

1. The Parties

The Complainant is Volvo Trademark Holding AB, Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <vovlo.net> is registered with DomainDoorman, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2006. On May 22, 2006, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On May 22, 2006, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16,2004.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 20, 2006. 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 company, which owns the VOLVO trademark throughout the world and licenses it to AB Volvo and Volvo Car Corporation for use in their respective businesses. Each of those companies own 50% of Volvo Trademark Holding AB. The Complainant’s predecessor was founded in 1915 as a subsidiary of AB SKF, a Swedish ball bearing manufacturer. The Volvo companies began making motorcars in 1927, and since then the business has been expanded to include trucks, buses and bus chassis, marine engines, construction equipment, airplane components and rocket engines, as well as other goods and services.

These products have been made and sold under the VOLVO trademark for many decades and it is registered throughout the world both as a trademark and as a service mark. The Complainant has exhibited to its Complainant a list of trademark registrations for the mark VOLVO and also the US registrations and printouts from the US Patent and Trademark Office’s assignment database system showing title in the Complainant to the trademark.

But the evidence and the known facts go much further than that, for it must also be accepted that the VOLVO mark is not only a famous trademark in every sense of the word, but that it is one of the most widely known marks in the world, has been accepted as such for many years and is synonymous with quality, precision, reliability, value and safety. It is also associated exclusively with the Complainant. Moreover, in many previous UDRP proceedings, cited in the Complaint, the Complainant has been successful in having transferred to it various domain names including the word “Volvo” or some variation of it, thus establishing that VOLVO is a famous mark. The Complainant has also been successful in having transferred to it the domain name <vovlo.com> and <vlovo.com> both of which have been considered as clear invocations of the VOLVO mark.

The Respondent registered the domain name <vovlo.net> on September 5, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <vovlo.net> should no longer be registered with the Respondent but that it should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered VOLVO trademark to which reference has already been made. It then says that it is self-evident that the domain name <vovlo.net > is confusingly similar to the VOLVO mark.

The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the renowned VOLVO mark, the Respondent is not named “Volvo” or “Vovlo” and it has not been authorized to use the VOLVO name or mark. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4 (c) of the Policy.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent must have been aware of the existence of the VOLVO mark and could only have chosen the domain name to attract visitors to its website by targeting users of the internet who mistype or ignore the correct spelling of VOLVO. Moreover, it is argued, this must have been done for commercial purposes, for the website associated with <vovlo.net> domain name provides links to websites which promote the sale of vehicles that are in competition with the Complainant as well as VOLVO vehicles.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel accepts the argument of the Complainant that it owns a famous mark. That case has been made out because of the historical evidence and the material in Exhibits A and B to the Complainant which show the registration of the VOLVO mark in the United States of America and throughout the world in connection with a wide range of vehicles, equipment and other goods and services. That material also shows that title to the trademark is held by the Complainant.

The Complainant also relies on several WIPO UDRP cases where the VOLVO mark has been held to be famous. It is not necessary to refer to all of those decisions, but the Panel will refer to one of the earliest and one of the latest, to show the continuity of the findings and the consistency of the evidence.

The former is Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338. In that case, the panel said:

“The Panel is satisfied that the domain name <volvooceanrace.com> is confusingly similar to the registered trademark “VOLVO” which falls into the category of a “famous mark” as one of the best known automobile and vehicles trademarks in the world.”

It is clear that that decision and the words just quoted are relevant for other aspects of the present case, but the Panel cites it here as a recognition of the fame of the name and the universal respect in which it is held.

A more recent case was Volvo Trademark Holding AB v. Lorna Kang, WIPO Case No. D2004-0909, in which the panel as presently constituted presided. In that decision the Panel observed:

“The Complainant also relies on several UDRP cases in this tribunal where the VOLVO mark has been held to be famous. The Panel would be influenced by decisions of respected panelists on such matters, but it is especially so in this case for the decisions referred to are based on the accumulated evidence revealed and used in each of those cases. The totality of the decisions is therefore a very substantial repository of evidence and when it is all consistent, as it is, it leads inexorably to the conclusion that the recognition of the fame of the mark has a very firm foundation.”

The Panel also concludes that the contentious domain name is confusingly similar to the VOVLO mark. The spelling of the domain name is virtually the same as that of the mark and all that has been done to create the domain name is to transpose two of letters of the word “Volvo”. It has been held in several other UDRP proceedings such as National Association of Professional Baseball Leagues, Inc. v. Zuccarini, WIPO Case No. D2002-1011 and the other cases cited by the Complainant that such transpositional spelling may form the basis of confusing similarity.

In any event, the Panel draws the inference that the misspelling in the present case was done deliberately to ensnare internet users who make a mistake in spelling the word VOLVO or who believe it is really spelt that way.

The Complainant has therefore made out the first element that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. The Respondent in the present case was given notice that it had until June 15, 2006 to send in its Response, that it would be in default if it did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

As the Respondent is in default, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, the Respondent has clearly appropriated the Complainant’s famous name and trademark without permission, giving rise to the prima facie assumption that he did so for an illegitimate purpose. If there were a more innocent or legitimate explanation, the Respondent could have given it, but this it has failed to do.

In the absence of such an explanation the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in [its] favour’: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.

Furthermore, the Respondent had the opportunity to bring itself within paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish even one of the criteria set out in Paragraph 4(c), giving rise to the inevitable inference that he could not do so by credible evidence.

All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name.

It is also apparent to the Panel that even if the Respondent had tried to bring itself within any of the above criteria, it would not have been able to do so. It cannot be said to have been making a bona fide offering of goods or services when it has virtually used the Complainant’s name to sell rival products; it is not named “Volvo” or “Vovlo”; and it has clearly been using the domain name for commercial gain to divert consumers away from legitimate Volvo websites to rival sites which also sell vehicles other than Volvos, by misleading them and thereby diminishing the standing of the VOLVO trademark.

This conclusion is consistent with and supported by the many UDRP decisions that the Complainant has meticulously collected and presented.

For all of these reasons the Complainant has shown that the Respondent has no rights or legitimate interests in the domain name and the Complainant has therefore made out the second element that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.

The starting point in this inquiry must surely be that the Respondent, like virtually everyone else, must have known of the Complainant’s famous VOLVO mark. That being so, it could not have chosen or subsequently used the word “vovlo” in its domain name for any reason other than to confuse internet users and by that means to attract them to a website with a name virtually the same as that of the famous mark. That is, in itself, evidence of bad faith, both generally and specifically within the meaning of paragraph 4(b)(iii) and (iv).

The Respondent’s substantial record as a serial cybersquatter, evidenced by the wealth of material contained in the Complaint, can only re-enforce this conclusion. Moreover, the “www.vovlo.net” website contains links to other websites promoting motor vehicles in direct competition to the Complainant’s, as well as Volvos. That again constitutes bad faith. Furthermore, there is no legitimate reason for the Respondent to be using the modified spelling of the word “Volvo”.

All of these factors go to show that the Complainant has made out its case showing that the contentious domain name was registered and is being used in bad faith, a case that is supported by and consistent with many UDRP decisions.

The Complainant has therefore made out the third element that it must establish.

 

7. Decision

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

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The Honourable Neil Anthony Brown QC
Sole Panelist

Dated: July 7, 2006