WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. e-motordealer Ltd.
Case No. D2002-0036
1. The Parties
The Complainant in this administrative proceeding is Volvo Trademark Holding AB ("Complainant"), a corporation organized and existing under the laws of Sweden, with its main business address at c/o AB Volvo, Goteborg, Sweden. Complainant's authorised representative in this proceeding are Cynthia Clarke Weber and Leigh Ann Lindquist, a partner and associate, respectively, at Sughrue Mion, PLLC, Washington DC, U.S.A.
Respondent in this administrative proceeding is e-motordealers Ltd. ("Respondent"), an entity with its main business address at 622 Manchester Road, Crosspool, Sheffield, United Kingdom.
2. The Domain Names and Registrar
The domain name at issue is <volvoinsurance.com> ("Domain Name"), registered with VeriSign (Network Solutions Inc.) ("Registrar") located in Virginia, U.S.A.
3. Procedural History
A Complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on January 17, 2002, by e-mail and was received on January 21, 2002, in hardcopy. An amendment to Complaint was received by e-mail on January 23, 2002.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on January 23, 2002.
On January 24, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on January 29, 2002, with its Verification Response that the disputed Domain Name was registered with Network Solutions Inc. and that Respondent was the current registrant of the disputed Domain Name.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on January 30, 2002, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on January 30, 2002, setting a deadline of February 19, 2002, by which the Respondent could file a Response to the Complaint.
On February 19, 2002, the WIPO Center received the Response to the Complaint by e-mail and on February 26, 2002, in hardcopy. The Acknowledgement of Receipt of Response was submitted to the Respondent by the WIPO Center on February 19, 2002.
Both parties elected to have the dispute decided by a single member administrative panel. The WIPO Center invited the undersigned to serve as Sole Panelist and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on March 5, 2002.
The WIPO Center transmitted to the parties on March 5, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date as of March 19, 2002. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexes as well as from the Response and its enclosed documents:
Complainant is a corporation which handles the trademark affairs of AB Volvo and Volvo Car Corporation throughout the world. AB Volvo and Volvo Car Corporation each own 50% of Complainant (the Panel agrees with Complainant in using the term "Complainant" in this administrative proceeding to refer to the actual Complainant (Volvo Trademark Holding AB) and collectively to AB Volvo and Volvo Car Corporation, on behalf of which Volvo Trademark Holding AB owns the trademarks.)
Complainant has been selling cars, trucks, buses, construction equipment, components for airplane, rocket engines and many other goods and services under the VOLVO trademark throughout the world for many decades, beginning in the 1920s. The mark VOLVO, alone and in combination with other terms and designs, is registered extensively as a trademark and service mark worldwide.
One member of the Volvo Group of Companies is Volvo Financial Services which offers different services including "a variety of insurance programs targeting customers who are in the transportation industry". In some parts of the world, Volvo Financial Services operates under the trade name VOLVO INSURANCE.
In the United Kingdom, there are seventeen live trademark registrations for the VOLVO mark for a variety of goods and services. The first trademark registration in the United Kingdom is dating back to October 26, 1955. Amongst these trademarks is Trademark No. 2026532, registered on July 10, 1995, in Class 36 (Insurance; financial affairs; monetary affairs; real estate affairs.).
The Panel agrees with Complainant that by virtue of the long and extensive use, the VOLVO mark has become famous, and is a well-known trademark all over the world.
Respondent, e-motordealer Ltd., is a new company which intends "to provide a one-stop shop for all the consumerís motoring needs from sale of the car through to servicing, parts, finance and insurance through the franchised dealer network." E-motordealer has therefore registered domain names in each of these sectors of the automotive arena.
The disputed Domain Name <volvoinsurance.com> was registered by Respondent on November 28, 2001.
5. Partiesí Contentions
Complainant contends that:
- the Domain Name is identical and confusingly to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name was registered and is being used in bad faith; and
- the Domain Name <volvoinsurance.com> should be transferred to the Complainant.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
Respondent disputes the above contentions. As a result, the Domain Name <volvoinsurance.com> should remain with the Respondent.
Additional respective contentions of the Respondent may be contained in the following discussions and findings.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith."
Identical or Confusingly Similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is <volvoinsurance.com>. Complainant is the holder of the registered trademark VOLVO. As rightly stated in the Complaint and upheld in Volvo Trademark AB v. Cup International Limited, WIPO Case No. D2000-0338; Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. DNU2001-0001; and Volvo Trademark Holding AB v. volvoaero.com, WIPO Case No. D2001-0723, the mark VOLVO is to be considered as a "famous mark" on the basis of its worldwide reputation in connection with the sale of automobiles and other vehicles. Since Complainantís mark is also registered in Class 36 (Insurance; financial affairs; monetary affairs; real estate affairs.) the Panel is satisfied that the Domain Name <volvoinsurance.com> is confusingly similar to Complainantís mark VOLVO. By incorporating Complainant's popular mark with the generic term "insurance" - one of Complainant's offered services - at the end of the Domain Name, the likelihood of confusion is rather aggravated than dispelled (see Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976).
Additionally, the Domain Name at issue is identical to the trade name VOLVO INSURANCE, used by Complainant in some countries for marketing parts of its Financial Services.
The Panel therefore holds that the Complainant has established element (i) of the Policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may 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 trade mark 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 trade mark or service mark at issue."
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name <volvoinsurance.com> based on Complainantís continuous and long prior use of its mark VOLVO and its trade name VOLVO INSURANCE.
Respondent claims that Complainant does not have the legal right to be the sole provider of insurances for owners of Volvo Cars. Respondent asserts to have no intention to pass off as an insurance company that is part of or authorized by Complainant and holds that it has registered the Domain Name at issue for the purpose of supplying competitive quotations to Volvo drivers by providing a platform for many different insurance suppliers "to ensure the customer gets the best deal".
The Domain Name was registered on November 28, 2001. Respondent maintains that it is currently approaching potential suppliers and partners for its project and that the site referring to the Domain Name <volvoinsurance.com> is in design and expected to be functional by September 2002. A Draft Business Plan (Response Exhibit A) and a printout of the planned website (Response Exhibit P) have been provided to prove these assertions and to demonstrate Respondentís preparations to use the Domain Name in connection with a bona fide offering of goods and services.
While the Panel is satisfied that Respondent, prior to any notice of this dispute, seems to demonstrably have started preparing an offering of goods and services, it is hard to draw a bona fide connection of this to the use of the Domain Name at issue. As shown by the search for "volvo insurance" on the Altavista search engine (Response Exhibit H) and by Respondentís claim that in the UK alone, there are over 200 insurance companies that provide insurance cover on Volvo cars, it is clear that the described goods and services can be and currently are marketed and sold without using a Domain Name incorporating the mark of Complainant. Respondent refers to DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 where the Domain Name (<mercedesshop.com>) was found to be descriptive of the business conducted there. Respondent claims the same to be the case for this proceeding. Quoting from this Case, Respondent asserts that "in conducting the planned business it would be difficult if not impossible to altogether avoid use of the word VOLVO". The Panel disagrees. This proceeding is only concerned with the use of the word VOLVO in a Domain Name. In view of the available technology of using META-tags to increase the number of hits on search engines, tThere is no need for Respondent to include the protected trademark VOLVO, or any other car manufacturers' protected trademarks, in the domain name in order to carry out its business. Even if the domain name did not include the component VOLVO, Respondent's web page could be found on the Internet.. Avoiding Complainantís mark in the Domain Name, therefore, would be easy and would constitute no impediment to Respondentís business.
Furthermore, Respondent maintains that Complainantís use of the trade name VOLVO INSURANCE relating to truck insurance, bus insurance and construction equipment insurance in Australia, as well as referring to credit protection insurance on credit agreements in South Africa, has no connection with Respondentís intended business of insurance for Volvo drivers in the European Union. However, by using a Domain Name of the gTLD ".com", public attention is attracted worldwide and hence conflicts with Complainantís long prior use of the trademark VOLVO and/or trade name VOLVO INSURANCE would have to be expected.
Finally, in WIPO Case No. D2001-0160 mentioned above and quoted in the Response, the Domain Name at issue was <mercedesshop.com> and it was held that "under the present facts, if the Panel were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and after-market accessories could ever register a domain name descriptive of that business." This Panel again disagrees. It does not see a vested right of anybody, particularly not of a competitor, to incorporate a famous trademark in its domain name in a manner confusing or diverting Internet users. As mentioned above, Respondent is not prevented from using the word or syllable VOLVO as a META tag on search engines in order to be visible on the Internet, nor is it prevented to use the term in a non-trademark sense on its webpage. It could even use the word or syllable VOLVO in the Domain Name, but, in view of the wording of paragraph 4(c)(iii) of the Policy, only in a non-confusing and non-diverting manner. By allowing the use of misleading and diverting domain names, Respondent could get a free ride and could bank on the goodwill created by the trademark holder with great investments and over a long period of time. Had Respondent registered a non-confusing domain name, identifying the trademark to belong to someone else, such as for instance: <insuranceforvolvos.com> or <volvoinsurancebroker.com> (which examples do not imply or even clearly exclude ownership, affiliation, endorsement or support by the trade mark holder), the Panel would could have taken a different view as to their admissibility. By contrast, the Domain Name chosen by Respondent at first sight appears to be one of Complainant's and it is only upon arriving at and studying the web page that the (intended) disclaimer can be seen. At that point, the consumer has already been diverted and mislead, attracted by the false impression created by the misleading Domain Name. The Policy wants to avoid this.
In the light of the above, the Panel finds that Respondent's intended use of the Domain Name does not represent a legitimate noncommercial or fair use of the Domain Name. The very composition of the Domain Name is suitable to mislead and divert consumers, at the same time tarnishing the trademark of Complainant. Thus, Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 location or of a product or service on your web site or your location."
Respondent admits that it is intending to attract Internet users to its website for the purpose of commercial gain through the offering and sale of products and services relating to VOLVO and other automobiles. As this Panel established above, the Domain Name <volvoinsurance.com> creates the likelihood of user confusion because the name itself implies the source, sponsorship, affiliation or endorsement by Complainant. The way the Domain Name is worded (without any clarifying component indicating a third party use), Respondent is trading upon Complainantís considerable goodwill and reputation, and hence infringes Complainantís registered trademark and service mark VOLVO, as well as its trade name VOLVO INSURANCE.
In the light of the above, the Panel abstains from dealing with Complainantís further contentions regarding the "for sale" character of the Domain Name, as well as the assertion that Respondent provided false contact details to Registrar. Both arguments have been contested by Respondent by presenting documents and other exhibits. However, in assessment of the facts mentioned above, the Panel concludes that both assertions are irrelevant for the outcome of this proceeding and thus can be left aside.
In conclusion, the Panel finds that the criteria of the Policy paragraph 4(b)(iv) are met and that Respondent's bad faith registration and use of the Domain Names in violation of the Policy paragraph 4(a)(iii) have been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical and confusingly similar to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name <volvoinsurance.com> shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: March 22, 2002