WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AV v. Roger Nichols

Case No. DTV2001-0017

 

1. The Parties

The complainant is Volvo Trademark Holding AB ("the Complainant") incorporated under the laws of Sweden with its principal place of business in Gothenburg, Sweden. The respondent is Roger Nichols ("the Respondent") whose address is Roger Nichols, Gothenburgs Finest, 401 Victor Way #9, Salinas, California 93907 United States of America. The administrative and technical contact is also Mr. Nichols.

 

2. The Domain Name and Registrar

The domain name, the subject of the complaint, is <volvocars.tv> ("the domain name"). The Registrar with which the domain name is registered is The.tv Corporation International of 1100 Glendon Avenue, Eighth Floor, LA California 90024, United States of America.

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received a complaint from the Complainant by email on July 9, 2001, and in hard copy form ("the Complaint"). On July 11, 2001, the Center forwarded an acknowledgement of receipt of the Complaint.

On July 11, 2001, the Center requested Registrar verification from The.tv Corporation International. On July 12, 2001, the Registrar confirmed that the copy of the Complaint had been received, that the domain name <volvocars.tv> was registered with the Registrar, that the named registrant of the domain name was Richard J Rosenberg and that the contact details for the domain name registrant were in the name of Roger Nichols of Gothenburgs Finest, 401 Victor Way #9, Salinas, California 93907 United States of America. Telephone and emails details were also confirmed. The Registrar also confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the domain name and that the current status of the domain name is active. By further correspondence between the Center and the Registrar on July 19, 2001, the Registrar confirmed all the previous details of registration save that the Respondent was confirmed as the named registrant of the domain name.

On July 20, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceedings. That Notification confirmed that the Complaint satisfies the former requirements of 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"). The Notification also advised that the formal date of the commencement of the administrative proceedings was July 20, 2001, and notified the Respondent that last day for sending the Response to the Complainant and to the Center was August 8, 2001. The Notification was sent to the Respondent at the address listed with the Registrar both by courier and by email (the latter without attachments) in accordance with paragraph 2(a) of the Rules.

A document entitled ĎResponse to Complaint as Provided in Rules for Uniform Name Dispute Resolution Policyí was received on July 24, 2001, and in hard copy on July 27, 2001. It was signed by the Respondent as President, Gothenburgs Finest, a Californian Corporation Exclusive Volvo Car Service and Repair. The email version was from Keith Connor, whose email address is kwc1@msn.com, the email address registered with the Registrar as the contact email for the domain name registrant, the Respondent.

On July 25, 2001, the Center notified the Respondent of receipt of the Response, but also notified him that the Response did not comply with the formal requirements. A Notification of Deficiency of Response was attached to the email. On July 25, 2001, the Center received an acknowledgement of receipt of the Notification of Deficiency from Mr. Connor.

On July 25, 2001, a further email was received from Mr. Connor asserting, inter alia, that the deficiencies did not need to be rectified as they related to details specified in the Complaint. A United States telephone number was provided and a further statement made as follows:

"However, any further communications to the addresses or the telephone number will be REFUSED, will be considered harassment, and will be reported to the Attorney General of the State of California as such."

It also stated that hard copies had been sent by US Post to the Center and to the other parties and that they were signed.

On July 27, 2001, the signed hard copy was received. However, other deficiencies noted had not been rectified. Those were formal deficiencies and the Panel has proceeded to determine the Complaint taking into consideration the matters in the Response.

The Center received further communication from Mr. Connor and the Respondent jointly as follows:

"Please note: As of September 2001, this domain name will no longer be in use by Roger Nichols or Gothenburgs Finest Volvo Repair. We will not renew the annual subscription to the domain name indicated, volvocars.tv. Please direct all enquiries regarding this domain name to TV CORPORATION. As of September, 2001 we will have no more interest in this domain name. We have no intention of renewing the domain name and wish no monetary recompense for the use of the name between the current date and September 2001. You may continue to waste time and energy pursuing this matter, but we do not intend to respond to any more enquiries or emails concerning this matter."

On July 12, 2001, a copy of that email was sent to the Complainant, informing the Complainant, inter alia, that the Center does not get involved in the negotiations of the parties nor any possible agreement. The Center also advised that, if no notice of agreement were reached, the proceedings would continue. On July 17, 2001, the Complainant notified the Center that it was neither engaged in, nor did it intend to engage in negotiations with the Respondent, that it "had attempted to settle the issue amicably before filing the Complaint but the respondent showed no interest at the time" and asked for the proceedings to continue.

On July 20, 2001, Mr. Connor and the Respondent, by email, asserted that the Respondent has, inter alia, "effectively transferred to the complainant in writing the rights to volvocars." and also asserted that the Respondent had a legitimate interest for the use of <volvocars> "since this is our only business". It also asserted that the Respondent did not acquire the domain name in bad faith, but for a legitimate business reason.

As there was no settlement, the proceedings continued. The Respondent accepted a single-member Panel and, on August 17, 2001, the Center issued a notification of appointment of the Administrative Panel and projected decision date naming Annabelle Claire Bennett as the single panelist.

 

4. Factual Background

The domain name was registered on September 1, 2000, and the Complainant discovered the existence of it in April, 2001. A letter was sent to the Respondent on April 2, 2001, requesting the transfer of the domain name upon receipt of the letter. The Complainant asserts that the Respondent had not replied to that letter by the date of the Complaint, nor did he attempt to contact the Complainant by any other means. The Panel notes, however, the reference (without more) to some correspondence or contact between the parties in the correspondence after the Complaint was received.

The following matters have been asserted in the Complaint and are not in dispute.

The Complainant is a holding company and the owner of the Volvo trademarks. That company is also responsible for the handling of trademark affairs on behalf of Volvo Car Corporation ("Volvo Car") and AB Volvo Worldwide ("AB Volvo"). Each owns 50% of the holding company. Volvo Car and AB Volvo have been two separate legal entities since March 1999.

The Complainantís predecessor was founded in 1915. The construction of automobile began in 1927 and the construction of trucks in 1928. In 1934, the manufacturing activities were expanded to include bus chassis and marine engines. In 1935, AB Volvo was introduced on the Stockholm Stock Exchange. The VOLVO mark has been used on cars and other products in the United States since the 1950s and the VOLVO mark is well recognized as a symbol for the highest quality. It is noted that both the Respondent and the Registrar are located in the United States.

Volvo Car has, since 1999, used the mark/domain name <volvocars> extensively in connection with its global marketing and sales activities on the Internet. Volvo Car is also the holder of a global domain name portfolio (<volvocars.xx>) including both country code top-level domain names (ccTLDs) and generic top-level domain names (GTLDs) and the Complainant provided evidence of a global name portfolio for <volvocars.xx>.

The global Internet marketing strategy of Volvo Car is based on "localised" websites under each regions ccTLD. This means that every site is adapted to that specific country with regard to language, market and culture, but with a consistent design overall. At present, Volvo Car has authorized websites in 40 countries using seven different alphabets and 22 languages. Excluding the US market, the Volvo Car site receives one million hits per month.

The Complainant is the owner of the trademark VOLVO which is registered and used in many countries worldwide including the United States. The same trademark is also registered in combination with other words in a number of countries. Of the trademarks held by the Complainant, three trademark registrations in the United States are specifically relied upon. Those trademarks are in classes which cover automobiles and truck tractors and parts thereof, automotive repair service and, generally, motor vehicles and spare parts. Evidence was also provided of a list containing all Volvo trademark registrations world wide which are, to say the least, extensive.

The localized websites created by Volvo Car were also created for marketing purposes.

The Complainant also asserted that the trademark VOLVO is considered a well-known or famous trademark and relied upon two separate WIPO cases, Volvo Trademark Holding v. Cup International Limited (WIPO Case No. D2000-0338) and Volvo Trademark Holding AB v. Eurovendic (WIPO Case No. DNU2001-0001). In the Volvo Trademark Holding v. Cup International Limited case, the Panel, after noting the long and extensive use of the mark VOLVO, referred to the Complainantís submissions that the complainant submitted that VOLVO had "become famous and is Ďone of the best known automobile and vehicle trademarks in the world todayí. In the absence of evidence to the contrary, the Panel is prepared to accept this fact." The Panel accepted that submission. In Volvo Trademark Holding AB v. Eurovendic, the Panel said, "The Panel considers that, without any doubt, the mark VOLVO is to be considered as a famous mark under trademark law on the basis of its world wide reputation in connection with automobiles and other vehicles". The same reasoning applies in the present case.

In the present case, none of these factual matters asserted by the Complainant has been disputed and the Panel finds those facts established.

A number of factual matters were asserted by the Respondent. The Respondent pointed to the fact that, at the time of the registration of the domain name <volvocars.tv>, Volvo AB had not registered this particular domain name. The only business of the Respondent is servicing and repairing Volvo cars. Those matters have not been contested and the Panel finds them established.

In the Response signed by the Respondent as President of Gothenburgs Finest, it was also asserted that Gothenburgs Finest and thereby, impliedly, the Respondent, agreed to the remedy requested in the Complaint and wished to transfer to the Complainant, free of charge, <volvocars.tv>. That statement was elaborated to make it clear that such assignment could be to the Complainant or its agent or assignee and that the Respondent would assign all rights at no charge without any consideration or recompense including any out-of-pocket expenses. The Respondent also stated that the registration would expire on September 2, 2001.

 

5. The Partiesí Contentions

(a) The Complainant

The Complainant contends that each of the elements of paragraph 4(a) of the Policy have been established, namely:

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

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

(iii) the domain name was registered and is being used in bad faith.

The Complainant contends that Volvo Cars has, through its various activities, acquired a separate trademark right in the name Volvo cars and Volvocars. In particular, through its current and historical use of the <volvocars.xx> domain names on the Internet. The Complainant contends that the relevant and distinctive part of the domain name in issue is Volvo and that the domain name registration, <volvocars.tv> is therefore confusingly similar to the trademarks owned by the Complainant, so that the requirement 4(a)(i) of the Policy is satisfied.

The Complainant contends that an investigation has not shown any facts or elements to justify any prior rights or legitimate connection on the part of the Respondent to the names VOLVO and/or Volvo cars and relies upon the absence of any business or other connection or affiliation with the Complainant. Accordingly, the Complainant contends that paragraph 4(a)(ii) has been established.

The Complainant relies on the principle that bad faith may be presumed in the registration and use of the domain name consisting wholly or partly of the famous trademark of a third party (GA Modefine SA v. AES Optics, WIPO Case No. D2000-0306) and that it can safely be assumed that the Respondent was well aware of the world wide famous trademark, VOLVO, both at the time of registration and thereafter. It is submitted that it is this knowledge that must have been the main reason behind the registration and use of the domain name. It is also submitted that a further reason for the registration of the domain was the awareness on the part of the Respondent of Volvo Carís extensive use of the domain name <volvocars.xx> on the Internet. Relying on Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), the Complainant submits that non-use and inaction can constitute both bad faith registration and current use, thus establishing both requirements of paragraph 4(a)(iii) of the Policy. The Telstra Corporation case is authority for the proposition that paragraph 4(a)(iii) requires the complainant to prove use in bad faith as well as registration in bad faith and that inaction or inactivity by the Respondent may amount to the domain name being used in bad faith.

The Complainant submits that it is open to make a finding that the Respondent has registered the domain name with the knowledge of the existence of the notorious trademark VOLVO and the Complainantís use of the domain name <volvocars.xx> on the Internet. Further, by virtue of the reputation and goodwill of the trademark at issue and the use of the domain name <volvocars.xx> on the Internet, consumers and Internet users would believe that the holder of the domain name, <volvocars.tv> is Volvo Cars or is in some way associated with the same.

The Complaint raises a number of issues such as the danger of dilution of the trademark, erosion of the reputation of goodwill of the trademark on a global basis and the possibility that the registration and use of the domain name were made for the purpose of interrupting a business of the EEC and thereby attempting to force Volvo Cars to purchase the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

(b) The Respondent

The Respondent contends that the registration was for possible future use in his only business. The Respondent contends that there was no wish to interrupt the business of Volvo AB, denies that there was any request for money or any other consideration for the use of the domain name, <volvocars.tv> and that there is no wish to dilute the brand name VOLVO. Indeed, the Respondent contends that it has helped to further the business interests of Volvo AB by recommending the purchase of Volvo cars, Volvo parts and accessories and the use of Volvo US dealers for repairs of Volvo cars. The Respondent is engaged in the primary business of servicing Volvo cars and asserts that the registration of the then unregistered domain name was "a natural choice for our business". In other words, the Respondent denies that the facts establish that the domain name has been registered and is being used in bad faith.

 

6. Discussion and Findings

Identical or Confusingly Similar Domain Name (paragraph 4(a)(i) of the Policy)

The Panel is satisfied that the domain name, <volvocars.tv>, is confusingly similar to the registered trademark, VOLVO, which the Panel accepts falls into the category of a famous mark. The difference between the domain name at issue and the Complainantís trademarks do not negate the conclusion that the Respondentís domain name is confusingly similar to the Complainantís trademarks.

By virtue of the reputation and goodwill of the trademark and the use of the domain name, <volvocars.xx>, consumers and Internet users would believe that the holder of the domain name <volvocars.tv> is Volvo Cars or is in some way associated with the same.

Rights or Legitimate Interests in Respect of the Domain Name (paragraph 4(a)(ii) of the Policy

The Panel accepts that the Respondentís business is the servicing and repairing of Volvo cars. That does not, however, give to the Respondent a right in respect of the domain name. In considering whether the Respondent has a legitimate interest in the domain name, the Panel notes the Respondentís assertion that it only registered the domain name for "possible future use" in its business and that it registered the domain name simply because it had not already been registered. The Respondent does not in fact assert any relevant right or legitimate interest in respect of the domain name other than the mere fact that his company services and repairs Volvo cars. It is also relevant that, upon being served with the Complaint, the Respondent forcefully expressed a desire to transfer the domain name to the Complainant. No other factual matter contradicting the assertions of the Complainant were put forward. The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name, <volvocars.tv>.

Registration and Use in Bad Faith

The Respondent does not deny the Complainantís assertions that:

(a) the Respondent was well aware of the world wide famous trademark both at the time of registration and thereafter;

(b) this knowledge must have been the main reason behind the registration and use of the domain name;

(c) by virtue of the Complainantís long and extensive use of the VOLVO mark, it is extremely well known world wide and is rated as one of the top brands;

(d) the Respondent was aware of Volvo Cars extensive use of the domain name, <volvocars.xx> on the Internet;

(e) this knowledge with respect to Volvo Cars would have been a further reason behind the registration of the domain name.

The Respondent was obviously well aware of the existence and use of the trademark, VOLVO. Given the Complainantís numerous trademark registrations for and its wide reputation in the word, VOLVO, which are undisputed facts, it is not possible that the Respondent was unaware, at the time of registration, of the existence of that trademark and, indeed, the fact that other domain names were registered in the name of the Complainant or other Volvo companies. The Respondent must also have been aware, in view of the fame of the trademark, VOLVO and Volvo Cars, that there would be no apparent circumstances in which he could legitimately use the domain name, <volvocars.tv>. The Panel finds that the domain name was registered in bad faith.

On the Respondentís contention, the domain name was only registered for "possible future use". Accordingly, there was no past or present use of the domain name, there is no evidence of advertising, promotion or display to the public of the domain name or any legitimate non-commercial use of it. The inactivity on the part of the Respondent may, itself, amount to the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel notes the absence of denial of the assertions of the Complainant. The Panel also noted the assertions by the Respondent that the domain name, <volvocars.tv> was not registered for any then existing or planned use and that it had not been used as at the date of the Response to the Complaint, despite the assertion that the fact that the Respondentís company services Volvo cars meant that the Respondent and Gothenburgs Finest "felt that the registration of an unregistered name, volvocars.tv was a natural choice for our business". The Panel takes all of these matters into account, including the non-use and inaction on the part of the Respondent, to find that the Complainant has established that the domain name has been registered and is being used in bad faith.

 

7. Decision

The Panel decides that the domain name, <volvocars.tv> is:

(i) identical or confusingly similar to a trademark in which the Complainant has rights; and

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

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

Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel requires the domain name, <volvocars.tv> be transferred to the Complainant.

 


 

Dr. Annabelle Bennett, S.C.
Sole Panelist

Dated: August 31, 2001