WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Entreprises ReVolvo
Case No. D2004-0086
1. The Parties
The Complainant is Volvo Trademark Holding AB, of Sweden, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Entreprises ReVolvo, Roxboro, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <volvoworld.com> is registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
On January 30, 2004, the Complaint was received by e-mail by the WIPO Arbitration and Mediation Center (the "Center"). The hardcopy was received on February 4, 2004.
On February 3, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue.
On February 4, 2004, the Registrar transmitted by email to the Center its verification response confirming inter alia that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact, that the status of the domain name registration was active on at date, that the language of the Service Agreement is English.
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").
On February 20, 2004, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and that the proceedings had commenced on February 20, 2004. The Respondent was further notified inter alia that the due date for filing a Response was March 11, 2004.
On February 21, 2004, the Respondent sent an e-mail to the Center requesting a translation of the complaint into French in the following terms: " J'ai recu des documents concernants une plainte de Volvo portant sure le nom de mon site Internet "VolvoWorld.com" mais ces documents sont tous rédigés en anglais. Je suis canadien et francophone, et mes avocats sont aussi francophones et ne comprennent pas l'anglais. J'aimerais recevoir ces documents rédigés en francais. Merci de votre compréhension. "
On February 23, 2004, the Center replied to said e-mail, in English, advising the Respondent that the language of the administrative proceedings is English and that the Centre would continue to send documentation to the Respondent in English.
The Respondent did not submit any Response.
On March 30, 2004, the Center accordingly sent a Notification of Respondent Default to the Respondent.
On April 19, 2004, the Center appointed James Bridgeman as the sole panelist in this matter.
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
The Complainant is the owner of numerous registered trademarks for the word mark VOLVO and registrations for device marks incorporating the word VOLVO in jurisdictions throughout the world and has provided evidence of such registrations as an annex to the Complaint. The Complainant licenses its trademarks 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 Complainants registered trademarks in the USA date back to VOLVO Device registration number 636,128 registered on October 23, 1956. The Complainants registered trademarks in Canada date back to registration number TMA 110061 for the same device mark registered on April 25, 1958.
The Complainant's predecessor in title to the VOLVO trademark was founded in 1915, as a subsidiary of AB SKF, a Swedish ball bearing manufacturer. In 1927, construction of VOLVO cars began. By 1928, construction of VOLVO trucks began. 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.
The Complainant's 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 VOLVO trademark throughout the world for many decades, beginning in the 1920s. The Complainant's VOLVO mark has been used on cars and other products in the United States since the 1950s.
The Respondent registered the domain name <volvoworld.com> on July 31, 1997. The Respondent has established a web site at that address and the content of the web site inter alia offers VOLVO car parts for sale.
5. Parties' Contentions
The Complainant submits that its trademark VOLVO is a "famous" mark and has cited numerous decisions in cases brought by the Complainant under the Policy where the administrative panels have accepted that the Complainant's mark has achieved "famous" status.The Complainant submits that there is no question that domain name <volvoworld.com> is confusingly similar to the Complainant's famous VOLVO trademark. The Complainant has received inquiries and complaints from the Respondent's customers who believe that the Complainant and its related companies are affiliated with said domain name and web site at <volvoworld.com>.
Said domain name wholly incorporates the Complainant's registered mark and that is sufficient to establish confusing similarity for purposes of the Policy . In support of this assertion the Complainant cites the decisions in Oki Data Americas, Inc. v. ASD, Inc. (WIPO Case No. D2001-0903, November 6, 2001); Magnum Piering, Inc. v. The Mud Jackers and Garwood S. Wilson, Sr. (WIPO Case No. D2000-1525, January 28, 2001); EAuto, LLC v. SSS Auto Parts, d/b/a Kung-Fu Yea Enterprises, Inc. (WIPO Case No. D2000-0047, March 24, 2000).
The Complainant submits that it is especially the case that confusing similarity arises where the word that is added to the complainant's trademark is not distinctive. In the present proceedings where non-distinctive element "world" is added to the Complainant's distinctive mark. The element "world" is more or less geographic term. Administrative panels in other domain proceedings have noted that the addition of the common, generic term "world" to a well-known trademark leads to confusing similarity. In this regard the Complainant cites the decisions in The Coca-Cola Co. v. Raphael Taieb (WIPO Case No. D2001-0754) where the administrative panel made a finding of confusing similarity between COCA-COLA and <coca-colaworld.com> and American Online Inc. v. Daniel Mullen dba MSN and MSN Networks (WIPO Case No. D2000-1605 where <aolworld.com> was held to be confusingly similar to AOL.
The Complainant cited numerous other decisions under the Policy where administrative panels have found that a domain name comprised of a geographical term and another's trademark or service mark does not serve to dispel confusion.
The Complainant further submits that the fact that the Respondent has a disclaimer on its site does not dispel the confusion.
The Complainant further alleges that the Respondent has no rights or legitimate interest in said domain name <volvoworld.com> because of the Complainant's continuous and long prior use of its mark and trade name VOLVO.
None of the situations described in Paragraph 4(c) of the Policy can be established in this case. At the time the Respondent selected VOLVO as part of its domain name, it had constructive notice of Complainant's trademark rights under the laws of the USA viz. 15 U.S.C. §1072. The Respondent cannot conceivably claim to have been unaware of the famous VOLVO trademark, or the fact that the mark is owned by the Complainant. Nor can the Respondent deny that it did not have permission to use VOLVO as part of a domain name or in any other way.
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 commercial gain. In a telephone conversation the Respondent's administrative contact told the representative of the Complainant that he "makes his living" from the "www.volvoworld.com" web site and in the same conversation, that he makes a lot of money from the <volvoworld.com> sales.
Excerpts from the Respondent's web site at <volvoworld.com> are attached as an exhibit to the Complaint. The Complainant submits that its VOLVO trademark is ubiquitous on the Respondent's web site. The Respondent has no permission or authorization to use the Complainant's VOLVO mark, and in fact admitted to the representative of the Complainant on January 28, 2004, that he is "not really Volvo."
The Respondent is also not an authorized dealer in VOLVO parts or any other VOLVO products. The fact that Respondent is in business is quite clear from these excerpts, which discuss payment terms, ordering information and the like. Not only does Respondent have no legitimate interest in said <volvoworld.com> domain name, but the Respondent is blatantly using the VOLVO mark to sell products. The Respondent's intent is not only to make a commercial gain, but to do so by attracting customers to its site by using the Complainant's famous VOLVO mark, thereby misleading and deceiving them into believing his business is somehow sanctioned or approved by Complainant.
The Complainant further submits that the Respondent registered said domain name <volvoworld.com> in bad faith.
On information and belief, the Respondent chose the domain name <volvoworld.com> with full knowledge of the Complainant's rights therein. It is inconceivable that the Respondent was unaware of the VOLVO mark, which has been famous for decades throughout the world by virtue of Complainant's long, exclusive and ubiquitous use thereof. Nor could Respondent's selection of <volvoworld.com> have been in anything other than bad faith; there is no reason for Respondent to use VOLVO except to attract consumers to its web site, and sell products to others by virtue of his infringement of the VOLVO trademark.
In a January 28, 2004, telephone conversation with the representative of the Complainant, the Respondent's contact, said that he is selling VOLVO products but he is "not really Volvo."
The Respondent's contact also offered to sell said <volvoworld.com> domain name to the Complainant for USD $100,000 during the same January 28, 2004, telephone conversation. He also threatened to put the domain name up for auction on eBay and sell it to the highest bidder. The Complainant submits that clearly, in addition to infringing the VOLVO mark and using it to attract customers and make sales, the Respondent intends to traffic in the <volvoworld.com> domain name and sell it to the highest bidder if the Complainant will not meet his requested price.
Administrative panels in other disputes have found such actions to constitute bad faith. In support of this assertion the Complainant refers to the decisions of the administrative panels in Red Bull GmbH v. Bayer Shipping & Trading Ltd., (WIPO Case No. D2003-0271) where the administrative panel made a finding of bad faith registration and use where a respondent offered <myredbull.com> for USD $100,000 and threatened to list <myredbull.com> on an Internet auction site if monetary demand was not accepted; Surfdog, Inc. v. Dr. Charles Cooper (WIPO Case No. D2000-0065 where the Respondent made a demand for USD $100,000 to transfer <surfdog.com> it was found that the Respondent's primary purpose in the registration and use of the domain name appears to be to profit from its sale to the legitimate owner.
The Complainant also alleges that the Respondent uses a false address in the WHOIS database. The address in the WHOIS database is an address in Roxboro Quebec, Canada. The Complainant sent its first letter to that address. The Complainant's first letter was refused at that address and the package was returned to it with the indication from Federal Express that it was "incorrect recipient address/incomplete recipient address." The Complainant has submitted documentation to support this allegation. The Complainant submits that it follows that the Respondent is therefore in violation of paragraph 2(a) of the Uniform Domain Name Dispute Resolution Policy.
The Complainant alleges that there is no reason for the Respondent to use the Complainant's mark in his domain name other than to use it to attract the public to the Respondent's web site and sell products for commercial gain. If the Respondent is permitted to continue to use and hold said <volvoworld.com> domain name the public will be confused into believing or assuming that the Complainant does not object to use of its trademark in a domain name used by an infringer who does not have permission to use said VOLVO mark in any way. The Complainant submits that such confusion constitutes trademark infringement, and dilution in both the tarnishing and blurring senses, irreparably damaging a famous trademark and an invaluable asset of the Complainant.
The Complainant has annexed as an exhibit to the Complaint, a copy of a letter to the Respondent dated January 14, 2004, together with the Respondent's response of January 18, 2004, stating that Volvo Car and/or the Complainant should make an offer for the domain name, failing which the Respondent would transfer the said domain name to a VOLVO dealer. The Complainant has also annexed as an exhibit to the Complaint a letter of January 26, 2004, requesting that Respondent not transfer the domain name to a VOLVO dealer. The Complainant alleges that this correspondence is further evidence of the Respondent's desire to traffic in the <volvoworld.com> domain name.
The Complainant further submits that the Respondent's bad faith is further evidenced by the fact that <volvoworld.com> is a blatant infringement and dilution of Complainant's trademark rights. It is inevitable that the public will assume that <volvoworld.com> belongs to the Complainant or that the holder and user of the name has been authorized or endorsed by the Complainant. The Respondent admits he is "not really Volvo." That is why actual confusion has occurred. In addition to traditional confusion arising from infringement, if the Respondent is permitted to continue to use said <volvoworld.com> the public will be confused into believing or assuming that the Complainant does not object to use of its trademark in a domain name which combines its famous VOLVO mark with a non-distinctive term by an unauthorized entity who is blatantly trading on the VOLVO mark. Confusion in both senses constitutes trademark infringement and dilution, irreparably damaging a famous mark and an invaluable asset of Complainant.
By the acts herein alleged, Respondent has infringed upon and diluted the Complainant's registered trademark and service mark VOLVO. The Complainant further alleges that on information and belief, the acts herein alleged have been committed with the intent and purpose of creating a likelihood of confusion and appropriating and trading upon the Complainant's considerable goodwill and reputation. The Respondent has thereby caused and will cause the Complainant serious and irreparable damage. The Respondent will continue and expand its damaging acts unless the Respondent's infringing domain name is transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions, but sent an e-mail to the Center on Saturday February 21, 2004, requesting a translation of the Complaint into French in the terms set out above.
6. Discussion and Findings
Preliminary Matter regarding Service of Documents
The Respondent has not filed any Response in this case. However, there has been an exchange of e-mails between the Respondent and the Center in which the Respondent has requested documentation in the French language and the Center has replied advising the Respondent that English is the language of the proceedings. The Center did not send any translated documentation to the Respondent and the Center continued to send documentation to the Respondent in the English language.
Rule 11 of the Rules deals with the language of proceedings and provides that "(a) [u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
As the Registrar has verified that the language of the Service Agreement is English, this Administrative Panel finds that proper procedures were followed. The e-mail from the Respondent clearly demonstrates that the Respondent was aware of the nature and purpose of the documentation received and it is incumbent on a respondent in those circumstances, to take such steps as may be necessary to have the documentations translated. There is no onus on the Center to provide such translations or to allow such a request to delay the process.
In making this determination this Administrative Panel is conscious that Rule 11(b) provides that an administrative panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding, but is of the view that such action is not appropriate. It would appear that the Respondent's request was disingenuous in this case as the Respondent's web site is in the English language.
A. Identical or Confusingly Similar
The Complainant has established its rights in the famous trademark VOLVO and that said domain name in dispute is confusingly similar to the Complainant's said trademark. This Administrative Panel accepts the Complainant's submissions that in the present case, when used in combination with the Complainants distinctive and famous trademark, the word "world" has no distinctive character such as might distinguish the said domain name from the Complainant's VOLVO mark. There may be other circumstances where the word "world" or a similar word may on its own or in combination with another element or elements of another trade mark result in a different outcome, but not in the circumstances of this case.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interest in said domain name <volvoworld.com>. It is most unlikely that the Respondent was unaware of the famous VOLVO trademark when said domain name was registered. The Respondent did not have permission to use VOLVO as part of a domain name or in any other way.
It is unlikely that the Respondent registered said domain name for any reason other than to take advantage of the Complainant's famous trade mark.
On the evidence submitted in the Complaint, the Respondent is using said domain name for a business purpose and there is no question arising that it is being used for non-commercial purposes.
The Respondent has no business connection with the Complainant or its goods or services.
There is no evidence before this Administrative Panel that the Respondent has any rights or legitimate interest in said domain name and the Complainant has established that for the above reasons, it is most improbable that the Respondent has any such rights.
Because of the fame of the Complainant's mark and because there is no trade or other connection between the Complainant as owner of the said VOLVO mark and the Respondent as registrant of the said domain name, on the balance of probabilities the Respondent has no right or legitimate interest in said domain name.
C. Registered and Used in Bad Faith
In all probability the Respondent chose the domain name <volvoworld.com> with full knowledge of Complainant's rights. This Administrative Panel accepts the Complainant's submission that there is no reason for the Respondent to use the word VOLVO as the dominant element of its domain name except to attract consumers to its web site, and sell products to others by virtue of an association with the Complainant's mark.
The evidence before this Administrative Panel is that on January 28, 2004, in a telephone conversation with the representative of the Complainant, the Respondent's contact offered to sell said <volvoworld.com> domain name to the Complainant for USD $100,000. He also threatened to put the domain name up for auction on eBay and sell it to the highest bidder.
Furthermore, it would appear that the Respondent has provided false information when registering said domain name.
The Complainant has provided convincing evidence of circumstances indicating that the Respondent registered said domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the VOLVO trademark and service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to said domain name. This is evidence of bad faith contemplated in paragraph 4(b)(i) of the Policy.
The Complainant has also provided convincing evidence that by using said domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site established at said domain address by creating a likelihood of confusion with the Complainant's registered mark VOLVO as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. These are the circumstances contemplated in paragraph 4(b)(iv) of the Policy as evidencing registration and use in bad faith.
On the balance of probabilities said domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <volvoworld.com> be transferred to the Complainant.
Dated: May 3, 2004