WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ford Motor Company, Volvo Trademark Holding AB and Volvo Cars of North America, Inc. v. Early Bird

Case No. DBIZ2002-00188

 

1. The Parties

The Complainants are Ford Motor Company, a corporation with a principal place of business at Suite 600, Parklane Towers East, One Parklane Boulevard, Dearborn, Michigan, 48126-2490, United States of America, and its two subsidiary corporations Volvo Cars of North America, Inc. and Volvo Trademark Holding AB  (collectively, "Complainant"). Complainant is represented in this proceeding by Gregory D. Phillips and Cody W. Zumwalt, Howard, Phillips & Andersen, 560  East 200 South, Suite 300, Salt Lake City, Utah 84013, United States of America.

The Respondent in this proceeding is Early Bird, an entity whose address is 2600  Lake Austin Boulevard, Austin, Texas 78703, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <volvocars.biz>.

The registrar for the disputed domain name is Alldomains.Com Inc., 1800 Sutter St., Suite 100, Concord, California 94520, United States of America.

 

3. Procedural History

This Complaint will be considered in accordance with the Start-up Trademark Opposition Policy for .BIZ".biz" (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May  11,  2001, the Rules for Start-up Trademark Opposition Policy for .BIZ".biz" adopted by NeuLevel, Inc. and approved by ICANN on May May 11, , 20012001, (the STOP Rules), and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ".biz" (the Center, the Supplemental STOP Rules).

The Complaint was filed on April 27, 20022002, by e-mail, and on May May 2, , 20022002, in hard copy. On May May 23, , 20022002, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. On June June 12, , 2002, after not receiving a response from Respondent, the Center sent Respondent a Notification of Respondent Default by e-mail.

The Administrative Panel submitted a Declaration of Impartiality and Independence on June June 27, , 2002, and the Center proceeded to appoint the Panel on July July 1, , 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.

The due date of this Decision is July 15, , 2002.

 

4. Factual Background

Complainant has made and sold automobiles and related products since the early part of last century. Complainant currently sells automobiles and related products worldwide, and its brand name, "Volvo", is known throughout the world. Complainant is among the largest corporations in the world, and has spent substantially to advertise and promote its product lines.

Complainant owns a registered United States trademark in "Volvo" as well as many trademarks in the same name in other countries (collectively referred to hereinafter as the "Complainant Trademark").

Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March March 27, , 2002.

 

5. The Partiesí Contentions (Summarized)

Complainantís Contentions

--Complainant has used the "Volvo" mark in the business of producing and selling automobiles products for a long time. The Complainant Trademark is well known worldwide and has taken on a secondary meaning with respect to automobiles and related products affixed with that mark.

--Complainant owns a registered United States trademark for "Volvo", and registered trade or service marks for "Volvo" in many other countries. The distinctiveness of Complainantís "Volvo" mark is demonstrated by the fact that no other person or entity, including Respondent, either filed an IP Claim or has a U.S. Trademark registration for the mark.

--Respondentís domain name is identical to the Complainant Trademark and to Complainant's registered domain name. The addition of the word "cars" to "Volvo" only increases the confusion, since cars are the primary products for which the mark "Volvo" is known. The Complainant Trademarks were registered before Respondent registered the disputed domain name.

--Respondent has no rights or legitimate interest in the disputed domain name. The Complainant Trademark is so world famous that Respondent could not acquire any rights to use it..

--The Respondent registered the <volvocars.biz> domain name in bad faith. Respondent chose the domain name, <volvocars.biz>, with full knowledge of Complainantís rights therein. Respondent had actual notice and knowledge of the Complainant Trademark and its use on automobiles and related products.

Respondentís Contentions

--Respondent did not file a response, thus Complainant's contentions are uncontested.

Due Process

--Since the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail, the Panel is convinced that Respondent has been notified of these proceedings and that due process has been satisfied.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <volvocars.biz> transferred to it, Complainant must prove the following in accordance with paragraph 4(a)(i-iii) of STOP:

--the domain name is identical 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 or is being used in bad faith

Identical

The Panel finds that Complainant owns a registration of the trademark "Volvo" in the United States (U.S. Registration No. 1815680, dated January January 11, , 1994, in int. class 12, for motor vehicles and related productsóComplaint Annex No. 2) as well as registrations for the same mark in many other countries. Complainant's rights in those trademarks existed before Respondent's registration of the disputed domain name.

The disputed domain name <volvocars.biz> contains Complainantís full trademark, adding to it the word "cars" and the gTLD ".biz". The difference created by the addition of ".biz" is immaterial because all disputes considered pursuant to STOP involve a domain name containing that gTLD.

However, the addition of the word "cars", although not reducing the confusion between the Complainant Trademark and the disputed domain name particularly because that mark is associated primarily with cars, does require the Panel to find that there is no identity between the two.

STOP, unlike the Uniform Policy for Domain Name Dispute Resolution, does not allow the transfer of a domain name merely because it is "confusingly similar" to a valid trademark. While previous STOP panels have ignored the addition of certain domain name punctuations (e.g., hypens, slashes, apostrophes and spaces), the differences created by the addition or deletion of alphanumeric symbols to the trade or service mark at issue compel a finding of non-identity under STOP (see Commonwealth Bank v. Rauch, Nat. Arb. Forum FA 102729 [February. February. 23, , 2002] [finding that the Complainant failed to establish rights in <cominvest.biz> pursuant to STOP, paragraph 4(a)(i), because its "COMMINVEST" mark was not identical to "cominvest" or <cominvest.biz>]).

Accordingly, with respect to STOP, paragraph 4(a)(i), the Panel finds that the disputed domain name is not identical to a trademark or service mark in which the Complainant has rights.

Since, to obtain a transfer of the disputed domain name, Complainant must prevail under each subsection of STOP, paragraph 4(a), the Panel does not need to consider whether Respondent has rights or legitimate interests in the disputed domain name (4[a][ii]) or whether Respondent registered and is using the disputed domain name in bad faith (4[a][iii]).

Additional STOP Challenges to the Respondent

The Center has informed the Panel that there is another STOP claimant for the disputed domain name in this case, <volvocars.biz>. Rule 15(e) requires that where, as here, neither the Claimant nor the Respondent has demonstrated legitimate rights or interests in the disputed domain name, then the next claimant may proceed with a complaint if it so desires. The Respondent in this proceeding is in default and thus obviously has not demonstrated any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the next challenger may proceed with a STOP complaint.

 

7. Decision

The Panel has found that Complainant failed to carry its burden of proof to show that the disputed domain name, <volvocars.biz>, is identical to a trademark or service mark in which the Complainant has rights per STOP at paragraph 4(a)(i). Therefore, pursuant to STOP, paragraph 4(i), and STOP Rule 15, the Panel orders that the disputed domain name, <volvocars.biz>, remain registered to Respondent, Early Bird. Also, pursuant to Rule 15(e), the next claimant may proceed with its complaint.

 


 

Dennis A. Foster
Sole Panelist

Dated: July 15, 2002