WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Soeren Groenlund
Case No. DNU2002-0003
1. The Parties
Complainant is Volvo Trademark Holding AB, represented by Cynthia Clarke Weber and Ann Lindquist, Sughrue Mion, PLLC, 2100 Pennsylvania Avenue, N.W., Washington, DC 20037, United States of America, hereinafter the "Complainant".
Respondent is Soeren Groenlund, Dam Enge 2, 3660 Stenloese, Denmark, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <volvodele.nu>.
The registrar for the disputed domain name is .Nu Domain Ltd, Medfield, Massachusetts, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2002, and in hard copy on June 27, 2002. On June 28, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On June 28, 2002, the Center also transmitted a Request for Registrar Verification to the registrar, with the Registrarís Response received by the Center the same day, confirming that the domain name at issue was registered through .Nu Domain Ltd, Medfield, Massachusetts, United States of America.
(c) On July 8, 2002, the Center satisfied itself that the Complainant had complied with all formal requirements 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"), the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
(d) On July 8, 2002, the Center also transmitted a Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent.
(e) No Response has been submitted by the Respondent within the deadline for the submission of Response. Accordingly, the Center issued a Notification of Respondent Default on July 29, 2002.
(f) In view of the Complainantís designation of a single panelist, the Center invited Mr. Peter Nitter to serve as panelist. Having received Mr. Peter Nitterís Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed Mr. Peter Nitter as Sole Panelist on September 10, 2002. On the same day, the Center transmitted the case file to the Administrative Panel and notified the parties of the appointment.
(g) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
After the Complainantís assertions, supported by the documents enclosed as annexes to the complaint, and undisputed by Respondent because of its default, the Panel finds the following:
Complainant is a corporation which handles and owns the trademarks of AB Volvo and Volvo Car Corporation throughout the world. AB Volvo and Volvo Car Corporation each owns fifty percent of Complainant.
The production of VOLVO cars commenced in 1927, and a few years later the production also included trucks, bus chassises and marine engines. The Complainant and itís predecessors in interest have since then been selling a broad range of vehicle and aerospace products, along with other products and services for decades. The VOLVO mark is registered extensively throughout the world, including Denmark. By virtue of Complainantís long and extensive use , the VOLVO mark has become famous, and it is one of the best known trademarks in the world today.
The VOLVO mark has been found to be famous in four previous administrative proceedings before the Center, namely WIPO Cases Noís D2000-0338, D2001-0001, D2002-0036 and D2001-1292.
The Respondent has registered the domain name <volvodele.nu> .
5. Partiesí Contentions
The Complainant asserts that:
The domain name at issue is identical to and confusingly similar to Complainantís trademark.
ĎDELEí means Ďpartsí in Danish and the term is intended to refer to vehicle parts in the Ďvolvodeleí name. ĎDeleí alone, and in conjunction with VOLVO, does nothing more than generically describe products which Complainant itself provides under its famous VOLVO mark, and has thus little or no source indicating significance.
The Respondent has no legitimate interest in respect of the domain name at issue.
Complainant owns all rights to the mark VOLVO as a result of its continuous and long prior use of said mark.
The domain name was and is registered and used in bad faith.
There is no reason for Respondent to use Complainants mark in his domain name, but to use it to attract the public to the web site for commercial gain. Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement between Complainantís mark and his web site by using VOLVO as a part of his domain name.
Respondentís company, Sosum Autodele ApS, has previously registered the domain name <volvodele.dk>. Respondent and the prior owner of <volvodele.dk> are one and the same and/or Sosum Autodele ApS is controlled by Respondent, proven by the fact that the web site <volvodele.dk> is linked to the domain name in question.
Respondent has also refused to answer Complainantís repeated requests for transfer of the domain name.
Complainant has filed a dispute resolution procedure with the Danish Board of Appeal for Domain Names and prevailed. The Board found that the respondentís "use and registration of the domain name <volvodele.dk> constituted an infringement of the Complainantís rights".
The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.
The Respondent has not submitted a response, and is thus in default and has neither made any submissions whatsoever after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i)the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii)the respondent has no rights or legitimate interests in respect of such domain name; and
(iii)the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark
The Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainantís trademarks. As a result of Respondentís default, these allegations have not been contested.
The domain name at issue is not identical to a trademark in which Complainant has rights.
The question is therefore whether the domain name at issue is confusingly similar to any of Complainantís trademarks.
Respondentís domain name <volvodele.nu> contains Complainantís house mark, and distinctive trade mark element VOLVO. There is thus a significant visual and phonetic similarity between Respondentís domain name and Complainantís trade mark VOLVO.
Said trademark is furthermore a famous mark associated with inter alia vehicles and parts for vehicles worldwide. Complainantís trade mark is the most distinctive part of the contested domain name, and due to the worldwide fame of this trade mark, the addition of the term Ďdeleí, cannot be deemed sufficient to prevent the risk of unfounded identity between the contested domain name and Complainantís trade mark.
To the Danish market, which Respondent obviously is approaching, the term Ďdeleí will be understood as the generic term Ďpartsí. Respondentís domain name <volvodele.nu> will therefore to a great extent give associations to the same kinds of products for which VOLVO is a trademark, thus increasing the risk of confusion between the domain name at issue and Complainantís trademark.
Thus, the Panel find that Respondentís domain name <volvodele.nu> is confusingly similar to Complainantís trade mark VOLVO.
6.2 Rights or legitimate interests in the domain name
The Panel has considered the allegation by the Compliant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue. As a result of default, these allegations have not been contested by the Respondent.
Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional light in a default proceeding (see WIPO Cases D2000-0076 (April 6, 2000) and D2000-0141
(April 24, 2000)). On September 12, 2002, the Panel visited the "www.volvodele.nu" web site of the Respondent in order to investigate whether any evidence could be found as to Respondents rights or legitimate interests in the contested domain name. The Panel did not find any such evidence.
Respondent has nothing to do with Complainant or Complainantís business, and there are no indications whatsoever that Respondent would have bona fide interests in relation to the trademark VOLVO.
Thus, the Panel finds that the Respondent has no rights or legitimate interest in the contested domain name.
6.3 Registration and use in bad faith
Complainantís allegations with regard to the Respondentís registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of his default.
Complainantís trade marks are famous, and have evidently been known to Respondent when registering the contested domain name. Said domain name is highly unlikely to have been registered if it were not for Complainantís trade marks.
Respondentís registration of the domain name at issue, and continuous use of the same, appears to be an attempt to exploit the fame and goodwill of Complainantís trade marks by attracting the public to his web site for commercial gain.
The Respondent is offering vehicle parts for sale through the web page corresponding with the domain name at issue. The domain name thus creates a strong likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site.
The Panel therefore finds that the Respondent has registered and used the domain name at issue in bad faith.
The Panel has found that the domain name <volvodele.nu> is confusingly similar to the trademark of the Complainant, and that the Respondent has no rights to or legitimate interest in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides to request that the domain name <volvodele.nu> be transferred to the Complainant, Volvo Trademark Holding AB.
Peter G. Nitter
Dated: September 26, 2002