WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Car Corporation and Volvo Trademark Holding AB v. Early Bird
Case No. DBIZ2002-00284
1. The Parties
Complainants are Volvo Car Corporation of SE-405 31, Gőteborg, Sweden and Volvo Trademark Holding AB of c/o AB Volvo of 405 08, Gőteborg, Sweden, represented by Gregory D. Phillips Esq. and Cody W. Zumwalt Esq. of Howard, Phillips and Andersen of Salt Lake City, Utah, United States of America.
Respondent is Early Bird of Austin, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <volvocars.biz> and the Registrar is Alldomains.Com Inc. of Concord, California, United States of America.
3. Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP"), the Rules for Start-up Trademark Opposition Policy for ".BIZ", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".BIZ" ("the WIPO Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") by email on August 16, 2002, and in hard copy on August 19, 2002. Its receipt was acknowledged on August 20, 2002. Following a request from the Center, Complainant on September 3, 2002, filed an amendment to the Complaint correcting a typographical error and bringing the Mutual Jurisdiction clause into conformity with the Rules. On September 10, 2002, the Center formally dispatched a copy of the Complaint (with the Amendment) by post/courier to Respondent at the address as recorded with the Registrar and by email. The Center included with that material a letter dated September 10, 2002, containing notification of the commencement of this administrative proceeding, with a copy of the Complaint (with Amendment) to Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was September 30, 2002. No Response was filed. On October 1, 2002, the Center sent to the parties a notification of Respondentís default. On October 7, 2002, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel, together with a copy of the decision in case DBIZ2002-00188 and notified the parties of the projected decision date of October 21, 2002.
The Panel is satisfied that the Complaint, as amended, complies with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the Complaint; the amended Complaint was actually delivered to Respondent by FedEx on September 12, 2002, at 09:19am; no Response was filed and the Panel was properly constituted.
The language of the proceeding was English.
4. Factual Background
As of August 23, 2000, Complainant Volvo Trademark Holding AB, an affiliated company of Complainant Volvo Car Corporation, became registered proprietor of Ireland trademark No. 219597 VOLVOCARS in Class 12 in respect of cars and parts, fittings, accessories and components included in that class.
On July 13, 2000, another company affiliated with Complainants, Volvo Cars of North America, registered the domain name <volvocars.com>.
The disputed domain name was registered by Respondent on March 27, 2002.
On April 27, 2002, Complainant Volvo Trademark Holding AB, together with Ford Motor Company and Volvo Cars of North America, Inc. filed WIPO Case No.DBIZ2002-00188 against Respondent in relation to the same disputed domain name, <volvocars.biz>, relying on their asserted rights in the mark VOLVO. That complaint was dismissed on July 15, 2002, on the ground that the disputed domain name is not identical to the mark VOLVO. Pursuant to Rule 15(e), the Panelist ordered that the next claimant may proceed with its complaint. Hence these proceedings.
5. Partiesí Contentions
Complainants, without distinguishing between them or between either of them and Volvo Cars of America Inc., (which is not a party to these proceedings), rely on the registered Ireland trademark VOLVOCARS; on asserted common law rights based on "their operation of business under the mark VOLVOCARS for many years"; on registration by Volvo Cars of America Inc. of the domain name <volvocars.com> and the operation of a website at that address. Complainants assert common law rights in the trademark VOLVOCARS.COM.
Complainants say the disputed domain name is identical to Complainantsí registered and common law trademarks VOLVOCARS and VOLVOCARS.COM. Complainants rely on Defensive Driver Online Ltd. v. Marco Publishing Corp., NAF Case No. FA00112435 (July 9, 2002) (finding the common law mark DEFENSIVEDRIVING.COM identical to the domain name <defensivedriving.biz> for purposes of STOP).
Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainantsí VOLVOCARS trademark is both distinctive and world famous. Complainants also own the registered mark VOLVO in many countries including the United States of America.
Respondent registered this domain in bad faith. Respondent received actual notice of Complainantsí IP Claim to the disputed domain name prior to its registration of it and has no legitimate interest in it. Alternatively, in registering a domain name which incorporates Complainantsí distinctive and world famous VOLVOCARS mark, Respondent has conclusively demonstrated a bad faith intention to use that mark in competition with Complainants in derogation of Complainantsí well established trademark rights. Respondent cannot possibly claim to have been unaware of the famous marks VOLVOCARS and VOLVO.
Complainants seek transfer of the disputed domain name to them (without distinguishing between them).
No Response was filed.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
Complainants are required by paragraph 4(a) of the STOP to prove each of the following three elements:
(a) the domain name is identical to a trademark or service mark in which at least one Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Failure to file a response
The Panel draws two inferences where the Respondent has failed to submit a response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Rights in a trademark
Although the word CARS is descriptive, the word VOLVO is not. The combination VOLVOCARS is distinctive of motor vehicles of a particular source of manufacture and there is no dispute that it is famous. However, it is not clear which entity within the Volvo group of companies owns common law rights in which countries. To establish rights in each Complainant, it is not sufficient for Complainants to assert their affiliation with each other and with Volvo Cars of North America, Inc. Although licence rights might be inferred from use of the mark by entities in the Volvo group, the Panel is not prepared to draw the inference uninvited and absent specific submissions and supporting evidence to that effect: Danfoss A/S v Coldwell Banker Burnet, WIPO Case No. DBIZ2001-00020.
The meaning of "identical" under STOP is not the same as under the UDRP, under which virtual or substantial identity will suffice. Every STOP proceeding, properly brought, should necessarily involve a disputed domain name that (apart from the ".biz" gTLD, which must be disregarded) is strictly identical to a trademark or service mark in which a Complainant asserts rights: Commonwealth Bank v. Michael Rauch, NAF Case No. FA00102729. This was the rationale for denying relief to members of the Volvo group in relation to this very same domain name in WIPO Case No. DBIZ2002-00188.
In the present proceedings, the disputed domain name is strictly identical to Complainant Volvo Trademark Holding ABís registered Ireland trademark VOLVOCARS, the suffix ".biz" being inconsequential.
Complainants have established this element of their case.
There is no dispute that the mark VOLVOCARS is famous. On this issue, it is unnecessary to establish which entity within the Volvo group has rights in that mark in any particular country because it is clear that Respondent is not a member of the Volvo group. There is no evidence Respondent is known by the name VOLVOCARS nor that Respondent conducts any business under that name nor any trade in Volvo automobiles that might arguably raise even the possibility of a legitimate interest on the part of Respondent in the disputed domain name. These circumstances are sufficient to constitute a prima facie showing by Complainants of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. Respondent has made no such showing.
Complainants have established this element of their case.
In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport, NAF Case No. FA0094956, a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA0094737; 163972 Canada Inc. v. Sandro Ursino, eResolution Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA0095037.
Apart from the undisputed evidence that the VOLVOCARS mark is famous, the
"Notice of a .biz Intellectual Property Claim" which Respondent would necessarily have received in this case provided unmistakable warning of the existence of a conflict over intellectual property rights: Gene Logic Inc v. Cho Kyu Bock, NAF Case No. FA00103042. Respondent nevertheless proceeded to register the disputed domain name and has failed to file a Response articulating any basis on which Respondent might claim a legitimate interest in the disputed domain name; nor any basis for refuting Complainantsí claim that the VOLVOCARS mark is famous nor any good faith basis for having registered the domain name. Under these circumstances the Panel is able comfortably to infer that Respondent registered the disputed domain name in bad faith.
Complainants have established this element of their case.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <volvocars.biz> be transferred to Complainant Volvo Trademark Holding AB.
Alan L. Limbury
Dated: October 13, 2002