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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Hong Kong Names LLC.

Case No. D2008-0735

1. The Parties

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

Respondent is Hong Kong Names LLC., Hong Kong, People's Republic of China

2. The Domain Name and Registrar

The disputed domain name <volvo-penta.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2008 naming Respondent as “HK Names LLC” at a Domain Privacy Service address that was the same as the registrar’s address, namely, “Jupiter, Florida, USA”. On May 14, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 15, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the current Respondent was in fact listed as the registrant and providing the contact details as an (incomplete) address in Hong Kong People’s Republic of China (“Hong Kong”). In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 22, 2008 by changing the name and address of Respondent to match that provided by the Registrar of record. The Center verified that the Complaint so amended 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 Respondent of the Complaint at the “Jupiter, Florida, USA” address, its “Hong Kong, PRC” address as well as by email to “postmaster@volvo-penta.com” and “hknames@gmail.com”. According to the documents accompanying the case file, the Hong Kong address was deficient by reason of it lacking a street name, and delivery could not be effected in that city. The email to “postmaster@volvo-penta.com” was apparently undeliverable. The only physical address at which a confirmed delivery was achieved was the “Jupiter, Florida, USA” address of the Domain Privacy Service and the only successful email delivery was apparently to “hknames@gmail.com”. The proceedings commenced on May 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 18, 2008.

The Center appointed Philip N. Argy as the sole panelist in this matter on June 20, 2008. 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 following facts, taken from the Complaint, are uncontested:

Complainant is a trademark holding company owned jointly in equal shares by AB Volvo and Volvo Car Corporation. It is the formal holder of all trademarks for the Volvo group of companies, of which AB Volvo Penta and Volvo Car Corporation are each a member. Member companies of the group are formally licensed to use relevant trademarks from the Group’s trademark portfolio in their respective businesses.

Complainant’s applications/registrations for VOLVO, PENTA and various combinations of them are extensive. The earliest use of the PENTA mark dates back to 1907 and the VOLVO mark 1927. PENTA is associated with quality marine propulsion and associated engine products and VOLVO with quality motor vehicles and associated engine products.

Complainant or its licensees attends all premier boat shows worldwide; VOLVO PENTA is the official engine for the famous Volvo Ocean Race.

The VOLVO mark, alone and in combination with other terms and designs, is registered extensively as a trademark and service mark in the United States America (“United States”) and elsewhere throughout the world, by virtue of which it is one of the best known trademarks in the world today. Similarly, the VOLVO PENTA and PENTA marks are each the subject of extensive registrations in various countries and have also each become famous trademarks in their own right.

Previous panels have so found, at least in relation to the VOLVO trademark, in no less than 20 earlier decisions.

5. Parties’ Contentions

A. Complainant

Complainant’s submissions and contentions are, in summary, that its three main trademarks, namely, VOLVO, PENTA, and VOLVO PENTA are famous marks, that Respondent’s <volvo-penta.com> domain name is confusingly similar to Complainant’s VOLVO and PENTA marks, and that Respondent has no rights or legitimate interests in the <volvo-penta.com> domain name.

Given the lack of a Response, Complainant’s submissions can be abbreviated for present purposes as follows:

(i) The disputed domain name is confusingly similar to a trademark in which Complainant has rights:

The domain name <volvo-penta.com> wholly incorporates Complainant’s registered trademarks VOLVO and PENTA, which Complainant submits is sufficient to establish confusing similarity for the purpose of the Policy despite the addition of the hyphen. Complainant also says that the disputed domain is identical to its VOLVO PENTA mark on the basis that the hyphen should be ignored.

(ii) Respondent has no right or legitimate interest in respect of the disputed domain name

Respondent has no rights or legitimate interest in the <volvo-penta.com> domain name based on Complainant’s/licensee’s continuous and long prior use of its mark and trade name VOLVO, and its VOLVO PENTA and PENTA trademarks.

Further, none of the situations described in paragraph 4(c) of the Policy can be established.

Complainant asserts that Respondent cannot conceivably claim to have been unaware of Complainant’s famous marks, nor of the fact that they are owned by an entity in the AB Volvo group.

Respondent is clearly not making any legitimate noncommercial or fair use of the domain name<volvo-penta.com>; it is parked at a Sedo website (a commercial domain monetization site).

Respondent is not known as VOLVO PENTA and is not using <volvo-penta.com> in connection with any bona fide offering of goods or services; Complainant urges the Panel to follow the finding in State of Florida Department of Management Services v. Bent Petterson, WIPO Case No. D2008-0039, which found that Sedo’s portal website does not constitute the bona fide offering of goods and services. Respondent is also not making legitimate noncommercial or fair use of the disputed domain name; In fact Respondent receives click through commission.

(iii) The disputed domain name was registered in bad faith

Respondent registered the disputed domain name on March 3, 2005. There is no reason for Respondent to use Complainant’s mark in its domain name other than to try to sell it to Complainant and prevent Complainant from registering the domain name <volvo-penta.com> or for other commercial gain.

“On information and belief” Respondent chose the domain name <volvo-penta.com> with full knowledge of Complainant’s rights therein. At the time of registration Respondent was on constructive notice of Complainant’s famous marks by virtue of Section 22 of The Lanham Act, 15 United States Code section 1072.

It is further inconceivable that Respondent was unaware of Complainant’s three famous marks. Nor could Respondent’s selection of <volvo-penta.com> been in anything other than bad faith because there is no reason for Respondent to have chosen that term except to attract consumers to its website. Respondent purposely registered <volvo-penta.com> for commercial gain.

Complainant cites both Volvo Trademark Holding AB v. Roger Nichols, WIPO Case No. DTV2001-0017 and Volvo Trademark Holding AB v. Soeren Groenlund, WIPO Case No. DNU2002-0003 as examples of cases where previous panels have found bad faith registration and use based on the same submissions from Complainant.

Complainant also relies on Respondent’s “blatant violation” of paragraph 19 of the Registration Agreement to which Respondent assented in registering the disputed domain name. It contains an express warranty by Respondent that “to the best of its knowledge and belief neither the registration of the domain name nor the manner in which it intends to use such domain name will directly or indirectly infringe the legal rights of a third party …”.

(vi) The disputed domain name is being used in bad faith

There is simply no explanation for registration and use of the <volvo-penta.com> domain name by Respondent except bad faith. Respondent is using the domain name to resolve to a Sedo ;landing page which features links to other sites selling Volvo Penta branded goods and other Volvo branded goods. According to Complainant, other panelists in “WIPO ICANN proceedings” involving Sedo parking pages have found such conduct to be evidence of bad faith, and Complainant cites two examples: Lyonnaise de Banque v. Richard J, WIPO Case No. D2006-0142 and Wal-Mart Stores, Inc v. Terry Davies, WIPO Case No. D2006-0031.

In addition, Complainant submits, the Sedo website indicates that the domain name is for sale, which puts Respondent in breach of paragraph 4(b)(i) of the Policy – for the purpose of selling or renting the domain name. Complainant cites NFL Properties LLC and New York Jets LLC v. Link Commercial Corp, WIPO Case No.D2004-1087 where the learned panel found bad faith proven where the disputed domain name in that case resolved to a site which stated “This domain name is for sale!/You can also rent this domain name or co develop it with us/…/To be considered your bid must be at least US$2,000/ Note most asking process are between US$10,000 and US$75,000”.

Respondent is alleged to have registered the domain name “with the express purpose of not permitting Complainant to register and use the domain name”. Respondent’s use of the domain name is also “blatantly opportunistic”, to adopt a phrase that has been used in a number of prior panel decisions.

Respondent’s bad faith registration and use is clear despite a disclaimer provided at Sedo landing page because the disclaimer does nothing to counter Respondent’s lack of legitimate rights, bad faith registration or bad faith use of the domain name.

Respondent’s bad faith is further evidenced by the fact that <volvo-penta.com> is a blatant infringement of Complainant’s trademark rights and dilutes the strength of Complainant’s trademark rights. It is inevitable that the public will assume that the disputed domain is owned by or used under license from Complainant or one of its licensees.

Complainant goes on to assert that Respondent will “continue and expand its damaging acts unless Respondent’s infringing domain name is transferred to Complainant”.

B. Respondent

There has been no response of any kind to the Center’s communications and, in particular, no response to the allegations made in the Complaint.

6. Discussion and Findings

Although Complainant’s submissions are formally uncontested, it has the burden of demonstrating that the requirements of paragraph 4(a) of the Policy are made out, and the Panel believes it proper to consider the submissions, and the evidence, and to make formal findings. Also, under paragraphs 10 and 15(a) of the Rules, the Panel regards this as a desirable course to take in any event.

A. Identical or Confusingly Similar

Complainant has extensively demonstrated its rights in the trademarks VOLVO, PENTA and VOLVO PENTA. Although Complainant cited the “fame” of its marks as the first ground for its complaint, it had to do no more than demonstrate that it had rights in the marks, and that the disputed domain name was identical or confusingly similar to those trademarks. The evidence of Complainant’s rights in the marks is overwhelming in its geographical, quantitative and temporal extent. The use of PENTA by Complainant’s predecessors in business can be traced back to 1907. Although the use of trademark holding companies can sometimes be problematical where a Complainant needs to rely, for example, on common law marks in the form of goodwill owned by associated entities, here there is no difficulty given the numerous formal registrations held by Complainant. Nothing else matters in so far as the first limb of the complaint is concerned.

The Panel has no hesitation in finding the disputed domain to be confusingly similar to Complainant’s well established trademarks VOLVO and PENTA, and identical to its VOLVO PENTA trademark.

B. Rights or Legitimate Interests

Respondent has not asserted any basis for its use of VOLVO or PENTA in the disputed domain name. This is one area where the lack of a response to a complaint involving famous trademarks makes it difficult for a Panel not to find in a complainant’s favour.

For the reasons advanced by Complainant, the Panel comfortably concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name, and so finds.

C. Registered and Used in Bad Faith

The marks VOLVO and PENTA have been in use for more than 100 years in United States. No plausible explanation for Respondent’s conduct has been proffered. There is no inference available to the Panel other than that the use of <volvo-penta.com> to direct users to a Sedo landing page is simply domain monetization unconnected with any bona fide supply of goods or services by Respondent. Respondent sits passively collecting click-through revenue generated solely from Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with Complainant or its licensees in any particular locality.

The Complaint goes beyond what is needed and in parts extends beyond what the annexed evidence or cited cases support. Also, Complainant demonstrates that all links on the Sedo landing page to which the disputed domain resolves in fact promote the sale of genuine products of Complainant’s licensees. This is not an example of consumers looking for Complainant’s brands and being mischievously diverted to other inferior products. The diversion here is simply to sites not directly owned or controlled by Complainant. The citation of other Sedo landing page cases is not entirely apposite for that reason.

The Center invited Complainant to consider modifying the Complaint once it became clear that Respondent was in fact not located in United States but in Hong Kong. The Complainant did not take up that invitation, and references to the Lanham Act and constructive notice remained in the Complaint. In the Panel’s view a resident of Hong Kong does not have constructive notice of a US-registered trademark no matter how famous it might be, although the extent of that fame is of course relevant to an assessment of the likelihood of actual knowledge.

The Complaint contains occasional overstatements, errors, submissions and artefacts more redolent of a trademark pleading than a UDRP complaint (such as “WHEREFORE, Complainant demands judgment as follows”). However, the strength of Complainant’s trademarks throughout the world are such as to require some plausible explanation from Respondent if the Panel is not to draw adverse inferences from Respondent’s conduct. In this case no explanation of any kind has been forthcoming and the use of a Sedo landing page to generate click-through revenue conveys a degree of sophistication on the part of Respondent that the Panel can also take into account.

Despite minor criticism of the form and content of the Complaint, the Panel formally and comfortably finds that the disputed domain name <volvo-penta.com> was registered and is being used by Respondent in bad faith.

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 <volvo-penta.com> be transferred to Complainant, Volvo Trademark Holding AB.

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Philip N. Argy
Sole Panelist

Date: July 4, 2008