WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Paul James
Case No. D2007-1462
1. The Parties
The Complainant is Volvo Trademark Holding AB, Göteborg, Sweden, represented by Sughrue Mion, PLLC, Washington DC, United States of America.
The Respondent is Paul James, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <volvoklassik.com> (the “Domain Name”) is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2007. On October 8, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On October 9, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 11, 2007. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2007.
The Center appointed Warwick Smith as the sole panelist in this matter on November 15, 2007. 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.
In the absence of a Response, the Panel has checked to ensure that the Center has discharged its responsibility to notify the amended Complaint to the Respondent. The Panel is satisfied that the Center has employed all reasonably available means to achieve actual notice to the Respondent. While the hard copies of the documents appear to have been returned to the Center marked “incorrect address”, and attempted email communications directed to email addresses at the Domain Name failed, the copies sent by email to the Respondent at his personal email address provided in the Whois information for the Domain Name, appear to have been successfully transmitted.
4. Factual Background
The Complainant and the VOLVO mark
The Complainant is a Swedish Corporation which owns the well known VOLVO trademark. It licenses the use of the VOLVO mark to AB Volvo and Volvo Car Corporation, for use in connection with their respective businesses (which are generally concerned with the sale around the world of Volvo cars, trucks, buses, and various other products).
The Complainant has provided details of the history of Volvo vehicle manufacture, which goes back to 1927.
The Complainant asserts that the VOLVO mark, whether alone or in combination with other terms and designs, is registered extensively as a trademark and service mark in the United States and elsewhere throughout the world. A list of the various United States’ federal trademark registrations was produced with the Complaint, together with corresponding printouts from the on-line database of the United States Patent and Trademark Office. These database extracts demonstrate that the Complainant is indeed the registered proprietor of numerous United States federal registrations for marks which consist of (or prominently feature) the word “Volvo”.
The Complainant asserts that by virtue of its long and extensive use around the world, the VOLVO mark is now one of the best known trademarks in the world. The Complainant has cited numerous Panel decisions under the Policy in which Panels have concluded that VOLVO is a famous mark, associated (inter alia) with vehicles and vehicle parts, worldwide.
The Respondent and the Domain Name
The Respondent registered the Domain Name on September 9, 2007.
The Complainant says that, at the time the Complaint was prepared, the Domain Name resolved to an inactive website. Prior to that, the Domain name had resolved to a website that promoted sales of the drugs Viagra and Cialis (a screen shot of this website, which the Complaint says was taken on September 10, 2007, was annexed to the Complaint – it prominently features advertisements and online order facilities for both drugs).
The Complainant says that it learned of the existence of the Domain Name on September 10, 2007. It says that on that date it received at the “Postmaster” email address for Volvo IT, an email advertising “Original Cialis!” and “Authentic Viagra”, with a reference to a website at the Domain Name. The email, a copy of which was annexed to the Complaint, is shown as having come from “Sales Department [email@example.com]”. The email was simply addressed to “Postmaster”.
The Panel has checked to see if the Domain Name currently resolves to any website. When the Panel keyed in the Domain Name, he was taken to a list of Google search results headed “Did you mean “www.volvocars.com””. The first result on this Google search page was for a website at “www.blockalert.com”, with the note “The website at [the Domain Name] was apparently spamvertized in this message. A detailed report (including IP addresses), a Whois lookup and IP block … www.blockalert.com”.
Beyond the information provided in the Whois details for the Domain Name, nothing else is known about the Respondent.
5. Parties’ Contentions
The Complainant contends as follows:
(i) It is the registered proprietor of the mark VOLVO in the United States of America and in numerous other countries.
(ii) The Domain Name is confusingly similar to the Complainant’s VOLVO mark. “Klassik” is merely a misspelling of the generic or descriptive term “classic” which refers to older Volvo vehicles. It is not source-identifying in any manner. “Klassik” is also German for “classical period”, which is also descriptive and non-source-identifying when coupled with VOLVO to create the Domain Name.
(iii) Creating a domain name by adding a generic or descriptive term to another’s trademark or service mark, does not serve to dispel confusion (citing Nintendo of Am, Inc. v. Tyasho Industries and Thomas G Watson, WIPO Case No. D2001-0976 and Harrods Ltd. v. Vineet Singh, WIPO Case No. D2001-1162).
(iv) The Respondent has no rights or legitimate interests in the Domain Name, for the following reasons:
(a) The Respondent did not have the Complainant’s permission or authorization to use VOLVO as part of the domain name or in any other way.
(b) At the time the Respondent selected the Domain Name, it was on constructive notice of the Complainant’s trademark rights in the VOLVO mark, by virtue of section 22 of the Lanham Act, 15 U.S.C § 1072. Further, the Respondent could not conceivably claim to have been unaware of the famous VOLVO trademark, or the fact that that mark is owned by the Complainant.
(c) The Respondent has not been making any legitimate non-commercial or fair use of the Domain Name “without intent or commercial gain”. The Domain Name has recently resolved to a website promoting the sale of the drug Viagra.
(d) None of the situations described in paragraph 4(c) of the Policy has been established.
(v) The Respondent registered and has been using the Domain Name in bad faith, for the following reasons:
(a) It is inconceivable that the Respondent was unaware of the Complainant’s famous mark (because of the Complainant’s long, exclusive and ubiquitous use of the mark) when he registered the Domain Name. Alternatively, the Respondent had constructive knowledge of that mark by virtue of section 22 of the Lanham Act (15 U.S.C § 1072).
(b) There was no reason for the Respondent to have used “Volvo” as part of the Domain Name, except to attract consumers to a website at the Domain Name with the intention of generating offers for the Domain Name or generating income from the sale of goods through such a website. The September 10, 2007 screen shot of the website to which the Domain Name then resolved, shows that the Respondent purposely registered the Domain Name with the bad faith intention of using the Complainant’s VOLVO mark to attract internet users to a website set up for the purpose of selling drugs such as Viagra and Cialis.
(c) The Respondent’s subsequent lack of use of the Domain Name shows that the Respondent did not register the Domain Name with the intent of legitimate use. Failure to make any use of a domain name can be indicative of bad faith registration and use (citing Ferrari S.pA v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882 and State Farm Mutual Automobile Insurance Company v. Fred Sotelo d/b/a Tolktec, NAF Case No. FA1008269).
(d) The Respondent registered the Domain Name to prevent the Complainant from owning and using the Domain Name.
(e) There was no justification for the Respondent’s registration of a domain name which incorporated with the Complainant’s mark a misspelling of “classic”, or a German term for “classical period”.
(f) The Respondent’s registration of the Domain Name was intended to, and will, confuse the relevant purchasing public into believing that the Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with, a website at the Domain Name.
(g) The email received by the Complainant on September 10 2007 suggests that the Respondent wanted to alert the Complainant to the Respondent’s use of the Domain Name. It would have made no sense to send an email to an IT email box about a Volvo domain name where Viagra is sold, if the Respondent was not looking to make some commercial gain in so doing.
(h) The Respondent’s registration and use of the Domain Name is a blatant infringement of, and dilutes the strength of, the Complainant’s trademark rights. It is inevitable that the public will assume that the Domain Name belongs to the Complainant, or that the holder and user has been authorized or endorsed by the Complainant.
(i) The Respondent’s acts have been committed with the intent and purpose of creating a likelihood of confusion and appropriating and trading upon Complainant’s considerable goodwill and reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General Principles under the Policy
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B Identical or Confusingly Similar
The Complainant has established that it is the registered proprietor of the mark VOLVO in the United States of America.
The Domain Name wholly incorporates that mark, and numerous Panels have found that the fact that a domain name wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See, for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the three-member Panel decision The Ritz Hotel Ltd v. Damir Kruzicevic, WIPO Case No. D2005-1137, and Quintessentially (UK) Ltd. v. Mark Schnorenberg/ Quintessentially Concierge, WIPO Case No. D2006-1643.
The Panel accepts the Complainant’s submission that the addition of the expression “klassik” does nothing to dispel the confusion resulting from the incorporation of the Complainant’s mark in the Domain Name. Phonetically, “klassik” is identical to the English word “classic”, and in the Panel’s view the word would be presumed by most English speakers (to the extent that they gave it any meaning at all) to be a foreign language, or mis-spelt, reference to older, or “classic”, Volvo motor vehicles. It appears that the Domain Name would likely convey a very similar meaning to German language speakers.
The word “Volvo” is clearly the distinctive, prominent part of the Domain Name, and the addition of a word conveying a descriptive meaning such as “classic”, or “of the classical period”, does not reduce that prominence sufficiently to remove the confusing similarity to the Complainant’s VOLVO mark.
Having regard to the foregoing, the Panel concludes that the Domain Name is confusingly similar to the VOLVO mark in which the Complainant has rights. The Complainant therefore succeeds on this part of the Complaint.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial 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.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.”
In this case, the Complainant has not authorized the Respondent to use the Complainant’s VOLVO mark, whether in the Domain Name or otherwise, and the Domain Name is confusingly similar to that mark. In those circumstances, the Complainant has sufficiently made out an initial prima facie case, and the onus shifts to the Respondent to show that he has some rights or legitimate interests in the Domain Name, whether under one or more of the subparagraphs of paragraph 4(c) of the Policy or on some other ground.
The Respondent has not filed a response, and that is strictly sufficient for the Complainant to succeed under paragraph 4(a)(ii) of the Policy. Furthermore, the Panel has looked at the record in the case, and is satisfied that there is nothing in the record which suggests that the Respondent might enjoy some rights or legitimate interests in the Domain Name.
First, there is no suggestion of the Respondent (or any business operated by him) being commonly known by the Domain Name – paragraph 4(c)(ii) of the Policy could not have had any application.
Secondly, there is nothing to suggest that the Respondent has been making any legitimate non-commercial, or fair use of the Domain Name, such as might have justified a claim to a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
Thirdly, there is no evidence of the Respondent having used the Domain Name (or any name corresponding to it) in connection with any bona fide offering of goods or services. It appears that for a brief period after the Domain Name was registered on September 9, 2007, it was pointed to a website at which the drugs Viagra and Cialis were marketed. But in the absence of any response, the Panel is not prepared to find that that particular use was bona fide. The Complainant’s VOLVO mark for motor vehicles is widely known around the world, and, in the absence of any explanation from the Respondent for his choice of the expression “volvo” as part of the Domain Name, the Panel can only conclude that the Respondent was aware of the Complainant and its mark, and intended the word “volvo” (as it appears in the Domain Name) to be understood as a reference to the Complainant or its famous motor vehicle mark. The only sensible inference from that conclusion is that the Respondent’s intention was to attract to a website at the Domain Name, internet users looking for sites associated with the Complainant or its products, and to derive revenue from at least some of those site visitors (i.e. those who might follow up on the Viagra and Cialis advertisements). The Panel cannot conceive of any plausible alternative reason for pointing a domain name containing as its dominant feature a famous motor vehicle trademark, to a website used for marketing remedies for erectile dysfunction. That is a bad faith use of the Domain Name and could never qualify as a use “in connection with a bona fide offering of goods or services”. Paragraph 4(c)(i) of the Policy therefore could not apply.
No other basis for the Respondent to claim a right or legitimate interest in the Domain Name appears to exist, and the Panel concludes that the Respondent has no such right or legitimate interest.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Complainant has proved this part of the Complaint. The Panel has come to that view for the following reasons:
1. The Domain Name is confusingly similar to the VOLVO mark in which the Complainant has rights, and the Respondent has no right or legitimate interest in the Domain Name.
2. In the absence of any response, the Panel is satisfied that the Respondent must have known of the Complainant and its VOLVO mark when he registered the Domain Name. As far as the Panel is aware, the expression “Volvo” has no meaning in the English language other than as a reference to the Complainant’s group and their “Volvo” motor vehicles and other products. The chances of the Respondent having come up with an expression as unusual as “Volvo” without being aware of the Complainant and its Volvo mark must be extremely low. The Panel therefore concludes that the Respondent knew of the Complainant or its mark when he registered the Domain Name, and intended the “Volvo” part of the Domain Name to be understood as a reference to Volvo motor vehicles.
The Panel notes that that conclusion should not be taken as some sort of acceptance of the Complainant’s submission that the Respondent had constructive notice of the Complainant or its Volvo mark, whether pursuant to section 22 of the Lanham Act (15 U.S.C § 1072) or on any other basis. First, panels deciding cases under the Policy have almost universally rejected any doctrine of constructive notice. The position is aptly summarized in the Center’s document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, at paragraph 3.4, as follows:
“Most panels have declined to introduce the concept of constructive notice into the UDRP. However, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used in a few cases to support a finding of registration and/or use in bad faith. In those cases, where the complainant’s trademark registration preceded the respondent’s domain name registration, respondent was presumed to have notice of the trademark.”
Secondly, the parties in this case are domiciled in Sweden and Australia respectively, and the Panel does not find that the Lanham Act, or indeed any other legislation of the United States of America, could have relevance.
The Panel’s finding, on the balance of probabilities, is that the Respondent had actual knowledge of the Complainant or its VOLVO mark.
3. Immediately after the Domain Name was registered, it resolved to a website at which the drugs Viagra and Cialis were being marketed. The website was clearly commercial in nature, and had no connection with Volvo motor vehicles or other products whatsoever. While this website appears to have been closed down at some time before the complaint was filed on October 3, 2007, there is sufficient evidence that the Respondent has intentionally attempted to attract internet users to a website at the Domain Name, for commercial gain, by creating a likelihood of confusion with the complainant’s VOLVO mark, as to the source, sponsorship, affiliation, or endorsement of the website at the Domain Name. The Panel can think of no plausible alternative explanation for the Respondent having chosen a famous motor vehicle brand as the distinctive part of a domain name pointing to a website used for marketing remedies for erectile dysfunction. The inevitable conclusion is that the Respondent intended to get a free ride on the Complainant’s goodwill in the VOLVO mark, for the purpose described at paragraph 4(b)(iv) of the Policy. As the panel put it in the very recent case of Samsung Electronics Co Limited v. Diversified Technologies, WIPO Case No. D2007-1365:
“Evidence of bad faith registration and use is given when the registration of a domain name occurs in order to utilize another’s well-known trademark by attracting internet users to a website for commercial gain (cf. America Online, Inc v. Tencent Communications Corporation, NAF Case No. FA93668; Lilly ICOS LLC v John Hopking/Neo net Limited, WIPO Case No. D2005-0694; Lilly ICOS LLC v East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101).”
That is precisely the situation in this case – the Domain Name was registered and has been used in order to utilise the Complainant’s well-known trademark by attracting Internet users to a website for commercial gain.
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 <volvoklassik.com> be transferred to the Complainant.
Dated: November 29, 2007