WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Michele Dinoia
Case No. D2004-0911
1. The Parties
The Complainant is Volvo Trademark Holding AB, a corporation organized and existing under the laws of Sweden, with a principal place of business at c/o AB Volvo, VHK, in Goteborg, Sweden, represented by Cynthia Clarke Weber, Esq. and Leigh Ann Lindquist, Esq., Sughrue Mion, PLLC, United States of America.
The Respondent is Michele Dinoia, SZK.com, of Pineto, TE, Italy.
2. The Domain Name and Registrar
The disputed domain name <wwwvolvocars.com> is registered with OnlineNic, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2004. On November 2, 2004, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On November 3, 2004, OnlineNic, 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, technical, and billing contact. In its email, OnlineNic, Inc. indicated that the language of the registration agreements of <wwwvolvocars.com> is English. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 1, 2004. The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules the Center formally notified the Respondent of the Complaint and its amendment, and the proceedings commenced on December 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2004. The Respondent did not submit any Response. Accordingly, on December 28, 2004, the Center notified Respondent that it was in default.
The Center appointed Stefan Naumann as the Sole Panelist in this matter on January 5, 2005. 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.
The Center set January 19, 2005, as deadline to forward the decision absent exceptional circumstances.
4. Factual Background
The Complainant is a company organized and existing under the laws of Sweden that owns numerous “VOLVO” trademarks, including 19 registered US trademarks that designate products and/or services in international classes 1, 2, 3, 6, 7, 8, 9, 11, 12, 16, 17, 25, 37, 39 and 41.
The oldest registrations submitted into evidence by Complainant are a verbal and a semi-figurative “VOLVO” trademark, both registered on October 23, 1956, and most recently renewed for a ten year period on October 23, 1996, for “automobiles and truck-tractors and parts thereof” (respectively numbers 636 128 and 636 129).
On June 19, 2003, Respondent registered the domain name <wwwvolvocars.com>. On January 11, 2004, the website contained (i) a search engine allowing searches by categories such as business, cars, education, entertainment, finances, insurance amongst others, (ii) photographs of children and (iii) a copyright notice “© 2004 wwwvolvocars.com all rights reserved”. The sponsored results for a search in the category “cars” include “free, upfront pricing on new cars”, “car price quotes and buying tips”, “car-low prices from local dealers” amongst others, with links to websites such as “www.carsmart.com”, “www.carbuyingtips.com”, “www.whypaysticker.com”, “www.edmunds.com” and others.
Respondent has not filed a Response. However, Complainant refers to, and the Panel has consulted, a number of WIPO administrative panel decisions in which the Respondent was also a respondent (See Fox News Network, LLC. v. Michele Dinoia, WIPO Case No. D2002-1082 (<oreillyfactor.com>); Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038 (<legoclub.com>); Société Air France v. SZK.COM, WIPO Case No. D2003-0518 (<frequenceplus.com>); FNAC v. SZK.com, WIPO Case No. D2004-0413 (<fnacdigitale.com>); BellSouth Intellectual Property Corporation v. Michele Dinoia, WIPO Case No. D2004-0486 (<wwwfastaccess.com>)). In one of these matters, Respondent submitted a response (WIPO Case No. D2002-1082) and in another Respondent was represented by an attorney (WIPO Case No. D2003-0038). In all of these proceedings, the domain names were transferred to the respective complainants.
5. Parties’ Contentions
Complainant explains that a number of companies including Volvo Car Corporation, Volvo Cars of North America, Inc., Volvo Cars of North America, LLC, and Ford Motor Company are part of the same group of companies that includes Complainant, and that Complainant itself is a joint venture owned by AB Volvo and Volvo Car Corporation. Complainant has not submitted any evidence establishing the relationship between these various companies and Complainant.
Complainant argues that its “VOLVO” trademark is famous, and that numerous WIPO domain name proceedings have recognized that the “VOLVO” trademark is famous worldwide.
In addition, the companies in the Volvo group of companies own the domain names <volvocars.net>, <volvocars.com>, <volvocars.org>, <volvocars.biz> and <volvocars.info>. It is however clear from the evidence submitted that Complainant does not itself own any of the various “volvocars” domain names.
Complainant further argues that various companies within the Volvo group of companies use the term “Volvo” as trade name and/or corporate name, alone or in combination with other terms, such as Volvo Cars of North America or Volvo Car Corporation.
It appears from the evidence submitted by Complainant that the use of the term “Volvo” alone or in combination with other terms as trademark, trade name, corporate name, and/or domain name takes place inter alia in the United-States of America, and began prior to the registration of Respondent’s domain name <wwwvolvocars.com>.
Complainant argues that Respondent’s domain name is identical to and confusingly similar to Complainant’s trademark and the “Volvo” trade name, and that the addition of the letters “www” and of the non-distinctive term “cars” does not reduce the similarity to Complainant’s trademarks and trade name. According to Complainant, Respondent has no rights or legitimate interest in the domain name <wwwvolvocars.com> because Respondent could not conceivably claim to have been unaware of the famous “VOLVO” trademarks and is using the domain name for commercial gain. As regards commercial gain, Complainant argues that the website appears to be essentially a search engine and that it is maintained by “www.hitfarm.com”, which allegedly pays compensation to domain name owners for pop-up advertisements. According to Complainant, pop-up advertisements appear when one accesses the “www.wwwvolvocars.com” website.
Complainant further alleges that Respondent registered the domain name in bad faith because Respondent was necessarily aware of the “VOLVO” trademarks and had no reason to use the term “Volvo” except to attract consumers to its website and generate revenue. Respondent allegedly also uses the domain name in bad faith because Respondent is a known cybersquatter and typosquatter, as is shown by the numerous WIPO decisions involving Respondent and its alter ego SZK.com, as well as numerous proceedings against Respondent brought before the National Arbitration Forum. As noted above, according to Complainant, Respondent has in addition linked its domain name to a commercial site from which Respondent “appears to generate revenue from pop-up advertisements”.
The Respondent did not reply.
6. Discussion and Findings
Complainant has established that it has acquired trademark rights in the term “Volvo” and that these rights are prior to the registration of the disputed domain name. The prior rights in the term “Volvo” as trade name and/or as domain name by companies related to Complainant cannot be relied upon by Complainant itself insofar as Complainant does not submit any evidence to establish that these other legal entities are part of the same group of companies, or that Complainant itself has rights in the “Volvo” trade name, corporate name and/or “volvocars” domain names. The Panel therefore does not need to reach the issue of the relevance of these rights and domain names in administrative proceedings under the Rules, other than to establish whether a trademark is well-known.
This being said, in order to prevail in the present proceedings Complainant does not need to establish that “VOLVO” is also used by other companies with the Volvo group of companies as trade name, corporate name and/or domain name. Likewise, the Panel does not need to reach a conclusion as to whether “VOLVO” is a famous trademark in order to reach its decision in the present matter.
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the domain name <wwwvolvocars.com> is confusingly similar to Complainant’s “VOLVO” trademarks, and considers that neither the addition of the letters “www” or of the non distinctive term “cars” diminish the distinctiveness of the term “Volvo” within the disputed domain name <wwwvolvocars.com>.
The Panel notes that Respondent’s website allows users to carry out searches by categories including a category named “cars”, and that the site contains a page titled “Sponsored Results for CARS”. At least some of the services offered by Respondent on the website “www.wwwvolvocars.com” are thus arguably similar to automobiles, automotive repair services, and leasing of vehicles, for which Complainant has filed trademarks. The similarity in the products and services increases the likelihood or risk of confusion that results from the similarity of the domain name <wwwvolvocars.com> with the term “Volvo” used as trademark by Complainant.
In this context, the Panel considers that the use of the letters “www” and of the term “cars” together with the term “Volvo”, as well as the use of a copyright notice on the website that includes the term “Volvo” and the use of a search category “cars” is designed to increase, or has the effect of increasing, the likelihood of consumer confusion that results from Respondent’s use of the term “Volvo” as part of the domain name.
The Panel therefore finds that the domain name <wwwvolvocars.com> is confusingly similar to Complainant’s “VOLVO” trademark.
B. Rights or Legitimate Interests
In order to establish that he or she has legitimate rights in the domain name <wwwvolvocars.com>, Respondent could attempt to demonstrate his or her demonstrable preparations to use, or actual use of, the domain name or of a name corresponding to the domain name in connection with a bona fide offering of goods or services, or that he or she has been commonly known by the domain name or is making a legitimate non-commercial or fair use thereof without intent of commercial gain and without misleadingly diverting consumers or tarnishing the trademark.
In the present matter, Respondent has chosen not to file a response, and the Panel has found no indication in the evidence it received that any of the circumstances described in paragraph 4(c)(i)-(iii) could apply in the present matter. Nor has Respondent claimed or demonstrated any other circumstances that could demonstrate his or her rights to or legitimate interest in the disputed domain name. As Respondent has filed responses and/or been represented by counsel in other WIPO domain name proceedings, the Panel considers that Respondent’s choice not to submit a Response in the present matter was deliberate or, at least, that Respondent does not have any arguments or evidence that, in his or her opinion, would constitute circumstances demonstrating his or her right or legitimate interest in the domain name <wwwvolvocars.com>.
The Panel therefore finds that the Respondent has no right or legitimate interest in the domain name <wwwvolvocars.com>.
C. Registered and Used in Bad Faith
Complainant has alleged that Respondent is a known cyber squatter and has listed in the Complaint in support of its allegation numerous WIPO and National Arbitration Forum cases in which Respondent was also a respondent. The cases revolve around a significant number of well-known trademarks and/or trademarks known to the Panel, and include some matters where Respondent used the letters “www” as part of the disputed domain names. The Panel has reviewed a number of these WIPO decisions, and is satisfied that Respondent has engaged in and engages in a pattern of cyber squatting and typo squatting. Based on the number of decisions, which in addition appear to unanimously have been unfavorable to Respondent, the Panel considers that Respondent’s selection of third party trademarks as part of his or her domain name registrations is the result of Respondent’s regular search of third party trademarks that he or she believes may direct traffic to his or her website(s).
In the present matter, the Panel considers that the Respondent registered the term “Volvo” as part of the domain name <wwwvolvocars.com> in bad faith as part of a pattern of registrations of third party trademarks.
Respondent’s website provides services notably in relation to cars and includes a copyright notice in the name of <wwwvolvocars.com>. Complainant argues that Respondent’s use is commercial because Respondent receives compensation for pop-up advertisements. However, Complainant’s evidence in this respect does not directly support the allegation. Complainant in essence shows that the website “www.wwwvolvocars.com” is hosted by domain name server “ns1.hitfarm.com” and “ns2.hitfarm.com”, and arguably shows that hitfarm is a pay-for-traffic web engine. However, no pop-up advertisements appear on Respondent’s web pages submitted into evidence by Complainant. At the time the matter was submitted to the Panel, Respondent’s website was apparently no longer accessible.
This being said, it appears from the “www.wwwvolvocars.com” web pages submitted into evidence that the search results provided by the website are sponsored results. Specifically, one of the pages lists “Sponsored Results for CARS”. The Panel interprets this to mean that Respondent receives compensation for the listings and links that it includes in its search results and/or for hits on the sites Respondent references. The Panel considers such use to fall squarely within the terms of paragraph 4(b)(iv).
The Panel therefore finds that bad faith use under paragraph 4(a)(iii) is also present in this matter.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <wwwvolvocars.com> be transferred to the Complainant.
Dated: January 19, 2005