WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Nick Bauer
Case No. D2002-1025
1. The Parties
The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden.
The Respondent is Nick Bauer of Connecticut, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <newvolvoparts.com> (Domain Name), which Domain Name is registered with Network Solutions Inc., Herdnon, Virginia, United States of America (NSI or the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), was submitted electronically to the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2002. The hardcopies with attachments was received by the Center on November 7, 2002.
On November 5, 2002, an acknowledgment of receipt was sent by the Center to Complainant.
On November 5, 2002, the Center transmitted to NSI a request for Registrar Verification in connection with this case. On November 7, 2002, NSI confirmed that: (i) NSI is the Registrar of the Domain Name; (ii) Respondent Nick Bauer is the current registrant of the Domain Name and (iii) the administrative and billing contact is Nick Bauer.
On November 8, 2002, the Center completed the Formal Requirements Compliance Checklist and then transmitted to Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) advising that a Response was due by November 28, 2002.
Having received no response from Respondent, on December 2, 2002, the Center transmitted to Respondent a Notification of Respondent Default, copying the Complainant.
On December 9, 2002, the Center notified the parties that Ms. Anna Carabelli had been appointed as Sole Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist was required to send her decision to the Center by December 23, 2002.
On December 20, 2002, the Center received from Complainant a request for the suspension of the proceeding, pending negotiations. The request was transferred to the Panelist who then ordered the proceeding be suspended until January 15, 2003, advising the parties that unless the Center received confirmation of a settlement by that date, the Panelist would issue her decision.
The order of suspension was transmitted to the parties on January 6, 2003, while a reminder was sent on January 15, 2002, but no confirmation of a settlement was received by the Center.
The Panelist has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant is a corporation based in Sweden controlled by AB Volvo and Volvo Car Corporation (which own 50% each of Volvo Trademark Holding AB). Volvo Trademark Holding AB, AB Volvo and Volvo Car Corporation are collectively referred to as Complainant in the Complaint.
Complainant has provided evidence of a number of live trademark registrations for VOLVO (Attachments A and B to the Complaint) owned by Complainant, three of which at least cover vehicle parts. Complainantís VOLVO trademarks are licensed to AB Volvo and Volvo Car Corporation for use in connection with their respective businesses. AB Volvo and Volvo Car Corporation have been selling cars, trucks, buses and many other goods and services under the VOLVO trademarks for many decades.
Respondent registered the Domain Name on August 21, 2001.
Respondent sells car parts on line through its web site "www.foreigncarpartsonline.com", which is accessible through the Domain Name.
5. Partiesí Contentions
Complainant contends that:
- Complainantís VOLVO marks have been extensively used worldwide since 1920, in connection with cars, trucks, buses, construction equipment, components for airplanes and many other goods and services, including vehicle parts;
- VOLVO marks have become famous worldwide by virtue of their long and extensive use, and enjoy excellent reputation by virtue of the quality of Complainantís products and services.
- in the US (where Respondent is based) the VOLVO marks, alone or in combination with many other terms and designs, are registered as trademarks and service marks and have been used on cars and other products since 1950;
- in the US, VOLVO-branded vehicle parts are sold by authorized VOLVO car dealers. Authorized VOLVO car dealers sell VOLVO-branded parts to other retailers or wholesalers who are not known to nor authorized by Complainant and do not have permission to use the VOLVO marks as part of their trade names, service marks, trademarks or domain names;
- the Domain Name is identical and confusingly similar to Complainantís VOLVO trademark and its trade name. The addition of the generic terms "new parts" does not diminish but rather increases the likelihood of confusion;
- Respondent has no rights or legitimate interests in the Domain Name since there exists no relationship between the Parties that would give rise to any license, permission, or other right by which Respondent could use VOLVO in a domain name or as a trade name;
- in addition, the <newvolvoparts.com> homepage also refers to non-VOLVO parts, therefore Respondentís is using the Domain Name to sell non-VOLVO parts, which conduct amounts to trademark infringement and unfair competition;
- Respondentís intent is to make commercial gain and to attract consumers;
- the Domain Name has been registered and is being used in bad faith since Respondent was certainly aware of Complainantís VOLVO mark at the time of registration and is attempting to attract customers to its site by using Complainantís famous mark for commercial gain.
Complainant refers to prior Panelsí decisions that in similar cases have decided in its favor and requests the transfer of the Domain Name.
Respondent has not submitted a Response and is in default.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel 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.
Under Paragraph 4(a) of the Policy, the complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the complainantís trademark or service mark; 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.
Paragraph 4(b) of the Policy identifies in particular but without limitation four circumstances which for the purposes of Paragraph 4(a) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) sets out in particular but without limitation three circumstances which, if proved by a respondent, shall be evidence of a respondentís rights to or legitimate interests in a domain name for the purpose of Paragraph 4(a)(ii).
(a) Identity or Confusing Similarity
The Domain Name is <newvolvoparts.com>. VOLVO is a registered trademark of Complainant. The Domain Name therefore consists of Complainantís trademark to which the general terms "new parts" are added. The Panelist agrees with the principle established by numerous prior decisions, that when a domain name contains in full a complainantís registered mark, that is sufficient to establish confusing similarity.
As upheld in previous decisions, the VOLVO mark is to be considered a famous mark firmly associated with Complainant in connection with the sale of automobiles and other vehicles (see Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338 (June 12, 2000); Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. DNU2001-0001 (April 29, 2001); Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002); Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002); Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002)).
According to the documents attached to the Complaint, at least three of the VOLVO trademark registrations owned by Complainant in the US specifically cover parts for vehicles. By incorporating Complainantís mark with the generic term "new parts", the Domain Name will create association with the same kind of products identified by the VOLVO trademark, thus increasing the likelihood of confusion.
Therefore, Complainant succeeds in head (i) of Paragraph 4(a) of the Policy.
(b) Rights or Legitimate Interests
Complainant contends that at the time Respondent registered the Domain Name, he could not be unaware of Complainantís famous VOLVO mark, particularly as Respondent is a car parts dealer. Complainant also contends that while Respondent may legitimately sell genuine VOLVO car parts, he has no right to use Complainantís famous mark in a domain name or as a trade name.
Respondent has not submitted a Response thus failing to invoke any circumstance under Paragraph 4(c) of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO Case No. D2000-0526 (July 19, 2000); Deutsche Bank AG v. Diego-Arturo Bruckner WIPO Case No. D2000-0277 (May 30, 2000); Talkcity Inc. v. Michael Robertson WIPO Case No. D2000-0009 (February 29, 2000)).
It is clear from the copies of pages from the Respondentís web site (attached to Complaint) that Respondentís business is to sell parts of foreign cars. This however does not give right to Respondent to use the VOLVO mark as a trade name to carry out its business (as it appears from the excerpts from Respondentís web site attached to Complaint as Attachment I) in order to make commercial gain and to attract consumers. Respondent cannot be prevented from using VOLVO in a non-trademark sense on its web site but this is not the way he is using the Domain Name.
Respondentís web site is accessible through the Domain Name, which misleadingly appears to be a domain name of the Complainant. Consumers would realize that this is not the case only once they have actually accessed the site and can see the disclaimer added by Respondent after it had received Complainantís objections. At this point, however, they have already been diverted and misled.
The Panelist therefore finds that Respondent has no rights or legitimate interests in the Domain Name.
(c) Bad Faith
Under the Policy, the complainant is required to prove also the third element provided for in Paragraph 4(a)(iii), namely that the domain name "has been registered and is being used in bad faith". Amongst the instances Paragraph 4(b) of the Policy identifies as registration and use in bad faith, there is the case where by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondentís web site or on line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of the respondentís web site or location or of a product or service on the respondentís web site or location.
As noted in Paragraph 6(a) above, the Domain Name incorporates Complainantís famous VOLVO mark which is firmly associated with Complainantís goods and services. Considering the nature of Respondentís business it is clear that Respondent was fully aware of Complainantís rights in the registered trademark VOLVO. Respondent is using its web site to promote its business under the Domain Name. This indicates an attempt to benefit from the reputation of Complainantís trademarks and to attract Internet users for commercial gain.
The Panelist finds that the Domain Name has been registered and is being used in bad faith.
The Panelist finds that: (a) the Domain Name is confusingly similar to Complainantís trademarks VOLVO; (b) 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 by Respondent.
Accordingly the Panelist decides that the Domain Name be transferred to the Complainant.
Dated: January 16, 2003