WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Old Volo, Inc., DBA Volo Classic Cars
Case No. D2003-0306
1. The Parties
The Complainant is Volvo Trademark Holding AB, c/o AB Volvo, Goteborg, Sweden, represented by Sughrue Mion, PLLC of Washington, DC, United States of America.
The Respondent is Old Volo, Inc., DBA Volo Classic Cars, Volo, Illinois, United States of America, represented by Allan A. Ackerman of Chicago, United States of America.
2. The Domain Name and Registrar
The disputed domain name <volocars.com> ("the domain name") is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2003. On April 24, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name. On April 25, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2003. A Response was filed with the Center on May 7, 2003.
The Center appointed Christopher P. Tootal as the Sole Panelist in this matter on May 20, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
1. The Complainant owns a very large number of registrations of the trademark VOLVO ("the Trademark") throughout the world. By way of example, one of its U.S. trademarks is No. 636,129, registered October 23, 1956.
2. The domain name was registered on November 5, 1997.
3. The domain name <voloautomuseum.com> was registered on May 7, 1998, by the Respondent.
4. The domain name <volvocars.com> was registered on July 13, 2000, by Volvo Cars of North America.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) Volvo Trademark Holdings AB owns the Trademark throughout the world and licenses the Trademark to AB Volvo and Volvo Car Corporation for use in connection with their respective businesses. AB Volvo and Volvo Car Corporation each own fifty percent (50%) of Volvo Trademark Holding AB. (The term Complainant herein is used in the Complaint to refer to Volvo Trademark Holding AB, the trademark owner, and AB Volvo and Volvo Car Corporation, on behalf of which Volvo Trademark Holding AB owns the Trademark, collectively.)
(ii) The Complainantís predecessor was founded in 1915 as a subsidiary of AB SKF, a Swedish ballbearing manufacturer. In 1927, construction of VOLVO cars began. By 1928, Volvo had begun production of trucks. In 1934, Volvo expanded its manufacturing activities to include bus chassis production and marine engine production. A year later, in 1935, AB Volvo was introduced on the Stockholm Stock Exchange.
(iii) The Complainantís predecessors in interest and licensees have been selling cars, trucks, buses, construction equipment, components for airplane and rocket engines and many other goods and services under the Trademark throughout the world for many decades, beginning in the 1920s. For example, the VOLVO mark has been used on cars and other products in the United States since the 1950s. By virtue of this long and extensive use, the Trademark has become famous, and it is one of the best known trademarks in the world today. The Trademark is well recognized as a symbol of the highest quality in cars and other goods.
(iv) In many previous proceedings under the Policy, the Trademark has been found to be famous. The Complainant relies on 9 prior WIPO Decisions Ė since the Respondent concedes, for the purpose of these proceedings only, that the Trademark can be considered to be famous, these Decisions will not be cited here.
(v) Volvo Car Corporation has been using VOLVO CARS as a trade name in the United States since at least 1992, when it adopted the name Volvo Cars of North America. VOLVO CARS is used extensively in connection with the sale and servicing of VOLVO cars throughout the United States and abroad.
(vi) Volvo Cars of North America, Inc. is the owner of the domain name <volvocars.com> which it uses for its U.S. and international website for VOLVO cars. Volvo Cars of North America, Inc. is also the owner of <volvocars.net>. It is the owner of the domain name <volvocars.org> and is identified as "Volvo" in the WHOIS. Ford Motor Company, the parent company of Volvo Car Corporation and its related entities and subsidiaries, holds the domain names <volvocars.biz> and <volvocars.info>.
(vii) Thus the Complainant has prior rights in the trade name VOLVO CARS which is used as a trade name and registered as a domain name by Volvo Cars of North America, Inc. The Complainantís rights in the VOLVO CARS trade name precede the Respondentís use and registration of the domain name by many years.
(viii) Instances of confusion are rampant. A search for Volvo Auto Museum on Yahoo lists "volocars.com" as the first hit. The same search shows several hotels near Chicago which erroneously say they are near the Volvo Auto Museum in the United States. There is no Volvo museum in the United States, although there is a Volvo museum in Sweden.
(ix) The domain name is confusingly similar to the Trademark and the trade name VOLVO CARS. First, VOLVO and VOLO are almost identical. <volvocars.tv> was held confusingly similar to both VOLVO and VOLVO CARS in the Roger Nichols case (Volvo Trademark Holding AB v. Roger Nichols, WIPO Case No. DTV2001-0017) and where the panel said:
"[T]he domain name, <volvocars.tv>, is confusingly similar to the registered trademark VOLVO, which the panel accepts falls into the category of famous markÖ By virtue of the reputation and goodwill of the trademark and the use of the domain name, <volvocars.xx>, consumers and Internet users would believe that the holder of the domain name <volvocars.tv> is Volvo Cars or is in some way associated with the same."
If <volvocars.tv> is confusingly similar to VOLVO and VOLVO CARS, then volocars is too. The overall marks, VOLVOCARS versus VOLOCARS, differ by only one letter. WIPO panels have consistently found a domain name which differs from a mark by only one letter to be confusingly similar. Here five prior WIPO decisions are cited. Moreover, neither VOLVO nor VOLO are English language words, and their meanings translated into English would be unknown to most Americans. This leaves two almost identical letter strings, the meaning of which is primarily, if not exclusively, as the trademark for a line of excellent cars and other vehicles.
(x) The CARS component, which is identical in both names, of course adds to the similarity. CARS is the generic name for the Complainantís primary and famous product line. "Cars" in conjunction with VOLVO or VOLO does nothing more than generically describe the primary product which Complainant, through its affiliated companies, sells under the famous Trademark.
(xi) The Respondent has no rights or legitimate interest in the domain name based on the Complainantís continuous and long prior use of its mark and trade name VOLVO in connection with cars and the trade name VOLVO CARS. None of the situations described in Paragraph 4(c) of the Policy can be established in this case. At the time the Respondent selected VOLOCARS as its domain name, its own name was Volo Auto Museum, not Volo Cars. As a company in the car business, the Respondent cannot conceivably claim to have been unaware of the famous Trademark, or the fact that the mark is owned by Volvo. Nor can the Respondent deny that it did not have permission to use VOLOCARS as a domain name or in any other way. While the Complainant does not dispute that the Respondent may legitimately use Volo as part of the name of its museum, i.e., VOLO AUTO MUSEUM, that is an entirely different question than the Respondentís use and registration of <volocars.com> as a domain name. Nor is the Respondent making a legitimate non-commercial or fair use of the domain name "without intent for commercial gain." The Respondent is in business, for the purpose of its own commercial gain. The Respondentís intent is not only to make a commercial gain, but to do so by attracting customers to its site by using a name so close to VOLVO CARS that it will mislead members of the public and deceive them into believing the Respondentís business and website is somehow sanctioned or approved by the Complainant.
(xii) The Respondent registered the domain name in bad faith. On information and belief, the Respondent chose the domain name with full knowledge of the Complainantís rights therein. At the time the Respondent registered the domain name and began operation of its website, the Respondent was on constructive notice of the Complainantís famous VOLVO mark. It is further inconceivable that the Respondent was unaware of the VOLVO mark for cars, which has been famous for decades throughout the world by virtue of the Complainantís long, exclusive and ubiquitous use thereof. The name of the Respondentís business, and its service mark and trade name, is, and has allegedly been for thirty years, VOLO AUTO MUSEUM, not VOLO CARS. The Respondent has applied to register VOLO AUTO MUSEUM, Ser. No. 76/018,001, as a service mark in the U.S. Patent and Trademark Office, not VOLO CARS. The Respondent owns a domain name registration for <voloautomuseum.com> which leads to the same site as <volocars.com>. There was thus never any legitimate reason to use or register the domain name in addition to <voloautomuseum.com>. The Respondentís selection of the domain name could not have been in anything other than bad faith; there is no reason for the Respondent to use VOLOCARS except to attract consumers who believe it is a VOLVO or VOLVO CARSí website to the Respondentís site.
(xiii) The Respondent is using the domain name in bad faith. There is no reason for the Respondent to use VOLOCARS in the domain name other than to use it to attract the public to the Respondentís website for commercial gain. The Respondentís name, its service mark and its other domain is Volo Auto Museum. There is no need whatsoever for the Respondent to also use or own the domain name. By using VOLOCARS, the Respondent is creating a likelihood of confusion with the Complainantís mark and trade name as to the source, sponsorship, affiliation or endorsement of the Respondentís website and the products offered on the website. By promoting cars under the domain name, the Respondent creates the unmistakable impression that it is authorized or endorsed or approved by VOLVO CARS, and/or that it is an authorized VOLVO CARS dealer. That is not the case. The Respondent is not authorized to hold itself out as authorized or affiliated with VOLVO CARS in any way, and Complainant has requested that it cease doing so.
(xiv) The Respondentís bad faith is further evidenced by the fact that the domain name is a blatant infringement and dilution of the Complainantís trademark and trade name rights. It is inevitable that the public will assume that the domain name belongs to the Complainant or that the holder and user of the name has been authorized or endorsed by the Complainant. In addition to traditional confusion arising from infringement, if the Respondent is permitted to continue to use the domain name, the public will be confused into believing or assuming that the Complainant does not object to use of the Trademark in a domain name which combines VOLO, a mark nearly identical to its famous VOLVO mark, with the generic name (CARS) for its primary and famous product line. Confusion in both senses constitutes trademark infringement and dilution, irreparably damaging a famous mark and an invaluable asset of the Complainant.
The Respondent asserts, inter alia, as follows:
(i) The Volo Illinois Auto Museum is located on Volo Road in the village of Volo, Illinois (the village was incorporated over 100-years). It is a small community located approximately 50-miles northwest of Chicago where approximately 175 citizens reside. Many of the Volo denizens work in Volo and surrounding communities.
(ii) Approximately 40-years ago, the Grams family started a nascent auto museum taking the name of the community where the museum is located and where the Grams family lived for over six decades (the family still resides in Volo). Over the last score or more of years, Bill and Greg, the surviving Grams brothers (along with spouses, children and grandchildren), have struggled to enhance their auto museum to the point where it now enjoys a worldwide reputation regarding the displaying/selling of antique, classic and American made muscle cars (originally produced in the United States by Ford, General Motors and Chrysler). The Volo Auto Museum has a small fast food restaurant, banquet hall (provided at no cost to various car clubs and charities), an antique mall, and a number of celebrity cars, including a Batmobile and Scooby Doo van, which are on display. The museum attracts thousands of visitors every year from throughout the United States and Canada. Its website ("volocars.com") is among the most popular in the antique, classic and muscle car world yielding millions of "hits" every month.
(iii) In a nutshell, the Respondent has a clear right and legitimate interest in the domain name and it was not registered, nor is it being used, in "bad faith." Further, the Respondentís museum has never sold, nor been involved with "Volvo" (the Respondent has no recollection of displaying or selling any Volvo). The Respondent registered its domain name on November 5, 1997, years before "Volvo" registered its domain name(s).
(iv) There is a world of difference between the Volo Auto Museum and Volvo vehicles and products. Assuming that a cyberspace junkie, or ordinary web user is searching for classic, antique or muscle cars, most assuredly, they are not directed to any of the Volvo websites. On the other hand, if a web user is attempting to locate information regarding a 4-door sedan with 4-wheel drive, or an industrial-type vehicle, they would not be searching for an antique, classic or muscle car. In other words, there is no realistic likelihood of confusion.
(v) It is abundantly clear that the Respondent did not acquire or register the domain name for the purpose of selling, renting or otherwise transferring it to "Volvo" (or anyone else!). Further, there is clearly no pattern of [mis]conduct regarding the Respondent, and the Complainant offered neither information nor evidence regarding any disruption of its business by virtue of the Respondentís world renowned Auto Museum. In addition, the Respondent has never attempted to attract Internet users who would otherwise have an interest in Volvo products or services -- in other words, the Respondent has no incentive for commercial gain or creating a likelihood of confusion in this case. A web user searching for Volvo who inadvertently reaches "volocars.com" is provided a direct link to Volvo ("Looking for the VOLVO car manufacturer click here").
(vi) In support of its contention that the Respondent has a high reputation in the classic, antique and muscle car world, there are exhibited four statements by senior executives of three auto museums and one corporation engaged in the sale of classic and antique cars. In three of these statements there are also assertions that there is no likelihood of confusion.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Is the domain name confusingly similar to the Trademark or to the trade name VOLVO CARS?
Clearly, there must be a risk of confusion arising out of typographical errors, and such errors are plainly at the heart of the instances revealed by the Yahoo search conducted by the Complainant (see para. 5A(viii) above). But, to rely on this single search in support of the assertion "Instances of confusion are rampant" is going too far. The Panel also notes that the Yahoo search was in respect of Volvo Auto Museum, not Volvo Cars.
Equally, the Panel does not place much weight on the statements of individuals who know the Respondent well and who dismiss any likelihood of confusion (see para. 5B(vi) above).
Also unhelpful is the Complainantís reliance on other WIPO decisions, each one of which depended on its own facts, and in each of which the Trademark itself featured in the domain name at issue.
The Panel is of the opinion that the essential question he must decide is whether VOLO is confusingly similar to VOLVO when used in relation to cars (as opposed to museums). Strangely, neither party relies on the phonetic differences between VOLO ("voeloe") and VOLVO ("vollvoe"). Even stranger, perhaps, is the Complainantís inability to provide any more evidence of instances of actual confusion than that in paragraph 5A(viii) above, despite the fact that the domain name has been registered for over five years.
In the end, and not without hesitation, the Panel is inclined to find for the Complainant. The immediate association of the majority of people seeing the Domain name is likely to be with the Trademark, and this is sufficient, in the Panelís opinion, to satisfy element (i) above, even if a cursory examination of the Respondentís website would then make it apparent that it was not connected with any Volvo company.
B. Rights or Legitimate Interests
As to element (ii), the Policy sets out the following, non-limitative, circumstances which would enable a Respondent to demonstrate he has rights or legitimate interests in a domain name:
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent registered the domain name on November 5, 1997, clearly intending to use it in relation to its business in antique and classic cars, a business carried on under the umbrella of the Volo Auto Museum. While the Respondent must have been aware of the Trademark, and its fame at the time, it is in the Panelís opinion clear that the Respondent has at all times intended to use the domain name in connection with a bona fide offering of goods, i.e. antique and classic cars, a business of long-standing, of substantial reputation, and not competing with the business of the Complainant.
The Panel concludes that the Respondent has rights and legitimate interests in the domain name, falling within the circumstances of Paragraph 4(c)(i) of the Policy. It cannot be correct, as argued by the Complainant, that mere constructive notice of the existence of the Trademark is sufficient to prevent a Respondent relying on the words "before any notice to you of the dispute." Clearly, the Respondent has acquired "rights" in the name VOLOCARS as a result of its trading activities (regardless of the Complainantís rights in the Trademark, the Respondent could restrain others, in appropriate circumstances, from trading under the name VOLOCARS).
C. Registered and Used in Bad Faith
The Complainantís case of bad faith against the Respondent under Paragraph 4(a) of the Policy depends solely on the undoubted reputation of the Trademark, and the assertion that, because of that reputation the adoption of the domain name must have been in bad faith, and so must its use. That is an argument which often succeeds in disputes under the Policy, especially when no valid reason for the Respondentís conduct is put forward.
Here, the Respondent has placed before the Panel ample evidence that it has acted in good faith. Its business in antique and classic cars does not, in the Panelís opinion, stand to benefit in any way from association with the Complainant. It is equally clear that the Respondent has not been motivated by any desire to damage the Complainant.
The Complainant has, in the opinion of the Panel, failed to establish element (iii) of Paragraph 4(a) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Christopher P. Tootal
Dated: May 28, 2003