The Complainant is Volvo Trademark Holding AB of Gothenburg, Sweden, represented by Valea AB, Sweden.
The Respondent is Volvospares of Durbanville, Cape Town, South Africa appearing pro se.
The disputed domain name <volvospares.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On December 3, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with it and has been placed on “lock” and will remain locked pending resolution of the dispute;
(b) the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applies to the domain name;
(c) Volvospares is listed as the registrant;
(d) providing the current contact information for the disputed domain name which differed from the contact information in the Complaint; and
(e) the language of the registration agreement is English.
The Center sent an email communication to the Complainant on December 15, 2008 providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 19, 2008.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 December 22, 2008. In view of the time of year, the Respondent requested an extension of time in which to file any Response. In accordance with the Rules, paragraph 5(d), the extended due date for Response was January 16, 2009. The Response was filed with the Center by numerous email communications in the period between January 9, 2009 and January 15, 2009.
On January 12, 2009, the Complainant filed an unsolicited Supplemental Filing seeking to correct some claims made in the Response.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 27, 2009. 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 Complainant is the trademark holding entity within the Volvo car and vehicle manufacturing group.
Use of the Complainant's trademark VOLVO can be traced back at least to 1927. It is registered in many countries throughout the world alone or in combination with other terms. There can be no doubt that the trademark VOLVO is very well-known in many parts of the world.
The Respondent first registered the domain name on January 13, 1997. The domain name resolves to a website from which used parts, reconditioned parts and new parts for VOLVO vehicles appear to be offered for sale.
According to the Response, the Respondent, who is also a director of some sort of “Internet Company”, registered the domain name to facilitate the online sale of Volvo spare parts in connection with the business of Charlton Volvo Centre. According to the Response, Charlton Volvo Centre had been operating as a specialist dismantler of Volvo cars in London since 1988.
The Respondent says that Charlton Volvo Centre relocated to Scotland in 2001 and it was decided to use a number of other dismantlers as suppliers for the business operated via the domain name since that date. As discussed below, the Complainant has made two unsuccessful attempts to purchase items from the site.
In July 2008, the Complainant's attorneys sent the Respondent a cease and desist letter. That letter did not result in a successful outcome from the Complainant's point of view and, in due course, the Complaint was filed.
As the Complainant's Supplemental Filing addresses positive matters specifically raised in the Response as initially filed and the Respondent has addressed the points raised in the Supplemental Filing in the final form of the Response as filed, the Panel admits the Supplemental Filing into the record.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(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.
There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant has clearly demonstrated that it has registered trademark rights for VOLVO. There is also no doubt that VOLVO is a famous mark in many parts of the world, particularly for motor vehicles and related goods and services.
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to those trademark rights.
The Respondent appears to dispute this, contending that the disputed domain name is totally representative of what is to be found at the website. This mistakes the nature of the inquiry at this stage. What is required at this stage is a comparison of the disputed domain name itself to the proved trademark rights. The point made by the Respondent, however, may be relevant at the stages of considering rights or legitimate interests and registration and use in bad faith.
Many, if not most, users of the Internet would expect the disputed domain name to have some association with the Complainant, or the Volvo group. That expectation of association is sufficient to satisfy the requirement of confusing similarity. Recent examples of this principle which this Panel has participated in include Iveco S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008-1725 and L'Oreal v. Whois Privacy Protections Service Inc. /Tracey Johnson, WIPO Case No. D2008-1721.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark rights.
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
“(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 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.”
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then, if that is established, an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) paragraph 2.1.
Under this head of the Policy, the Complainant points out that the Respondent is not affiliated with the Complainant (or the larger Volvo group) in any way and further the Respondent has not been authorized by the Complainant (or the larger Volvo group) to use the disputed domain name or any trademark based on VOLVO. The Complainant contends that the domain name is not derived from the Respondent's own name.
The Complainant contends that, at its highest, the Respondent is nothing other than an unauthorized reseller or dealer in Volvo spare parts. It submits further, however, that the Respondent does not satisfy the criteria accepted in cases such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
These principles have been accepted as applicable also in the case of an unauthorized reseller in cases such as Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 and ITT Manufacturing Enterprises Inc., and ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments Inc., WIPO Case No. D2008-0936. These principles are summarized in paragraph 2.3 of the WIPO Overview:
A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
The Complainant contends that the Respondent fails on each of these criteria. First, the Complainant contends that the Respondent is not genuinely offering Volvo spare (or other) parts for sale. The basis for this is that the Complainant's English solicitors placed an order for an oil filter on the Respondent's website in October 2007 and another order for an air filter in June 2008. A third communication was sent by the Complainant's Swedish lawyer in September 2008. In none of these cases were the goods supplied and the credit cards used for the purchases were never charged. The Complainant contends, therefore, that while the Respondent appears to be offering the goods for sale, they must actually be available for sale for the relevant rights or legitimate interests to arise.
The Respondent says that the usual procedure in his business when an order is received that cannot be filled is to reply to this effect and delete the inquiry. At this point in time, the Respondent is unable to tell from his business records whether or not the first two sales inquiries were received or what, if any, correspondence took place. The Respondent confirms, however, that no part was actually sent out. According to the Respondent, “it would appear that the part was listed in error. The part has since been removed.”
As to the third inquiry, the Respondent has been able to retrieve this. It does not request a specific part, but states “Please call for a discussion of needs”. The Respondent says it often receives similar “sales pitch” inquiries, but the fact that this inquiry came from a Swedish address and the Respondent rarely gets any genuine requests from Sweden raised some suspicions. Given the general nature of the inquiry made in the September 2008 communication, it can be disregarded for present purposes.
Annex K to the Complaint includes correspondence between the Complainant's attorneys and its English solicitors relating to the trap purchase for the oil filter. On its face, that correspondence supports the Complainant's position that the order was actually placed and does not raise any suggestion that a reply was received from the Respondent. Accordingly, on the rather limited information available in the record, the Panel finds on balance that the orders in October 2007 and June 2008 were actually placed. It is not contentious between the parties that no parts were ever supplied.
The Complainant's contention that goods must actually be available for sale proposes far too stringent a test. The example given in paragraph 4(c)(i), for example, extends to demonstrable preparations for use; a situation in which the relevant goods or services might well not be available for sale yet. Underlying the Complainant's contention, however, is a point which does merit consideration. In effect, the Complainant is suggesting that, as no goods were supplied, there is a basis for questioning that the apparent offering for sale of Volvo spare parts is in fact bona fide.
There are obvious difficulties in obtaining a definitive answer to this question in proceedings such as the present. On the one hand, there is the clear evidence of an apparently functioning website. The Respondent also positively asserts that the business conducted through the website has been operating for 10 years. Annex A to the Response contains a print out of what the Respondent claims was the homepage from 1997 to 2001. On the other hand, the Complainant can point to two orders for two different parts which were not supplied. The fact that the orders are two instances only and almost a year apart is consistent with the kind of business the Respondent claims to be operating. While the failure to supply the parts might raise suspicions, it is very difficult in a proceeding such as the present to go further than that, particularly when regard is paid to the nature of the Respondent's claimed business. In these circumstances, the Panel is unable to accept the Complainant's invitation to find that the Respondent is not in fact offering the Complainant's goods for sale in good faith.
Secondly, the Complainant contends that the Oki Data criteria are not satisfied because the Respondent's website appears to offer for sale parts which do not bear the VOLVO trade mark. That is, the Respondent's website offers for sale a range of oil filters and thermostats in the “New Parts” section which are not branded VOLVO.
The Respondent does not dispute that the parts in question are not branded VOLVO. Instead, the Respondent points out that a VOLVO vehicle, even a brand new one, includes many parts made by other manufacturers which bear the trademarks of those manufacturers. Obvious examples would be BOSCH spark plugs and the branding on the vehicle's tyres. The Respondent further points out that the filters used in VOLVO cars are manufactured by Mann and bear that manufacturer's trademarks. The Respondent says that the parts in question are simply the parts used in VOLVO vehicles and all the parts offered from the website are specifically for VOLVO vehicles, not other brands.
The disputed domain name is <volvospares.com>. The parts offered for sale are parts or spares for VOLVO vehicles and, it would appear, the parts actually sold or supplied with VOLVO vehicles by the Volvo group. The Panel also notes that the offering for sale of a relatively small or subsidiary range of associated products was not disentitling in Iveco S.p.A. v. Zeppelin Trading Company Limited, supra. In these circumstances, the Panel concludes that the Respondent is not disentitled from claiming rights or legitimate interests on this ground.
Thirdly, the Complainant contends that the Respondent's site does not accurately disclose the nature of the relationship between the Respondent and the Complainant (or the Volvo group). The Respondent's website does include a disclaimer:
Disclaimer: Volvospares.com has no affiliation with Volvo Group and makes no claim to or implication of being associated in any official business capacity in conjunction with or for such companies.
In its Supplemental Filing, the Complainant points out that the disclaimer was not present at the time the Complainant printed out the website for inclusion in the Complaint. The Respondent claims that the disclaimer was added before the Complaint was received.
The presence or absence of a disclaimer is not conclusive or fatal. See for example Volvo Trademark Holding AB v. Auto Shivuk, supra.
The introductory page for the Respondent's website does have images of VOLVO vehicles on it with the title VOLVOSPARES superimposed over them. The home page proper is headed
“VOLVOSPARES - For New, Used & Reconditioned Volvo parts.”
If you need spares for your Volvo you have come to the right place. We have been supplying quality spare parts for Volvos quickly, simply and cheaply for many years. If it's a single part or a large trade order, for Volvo spares think VOLVOSPARES.COM”
Then follows an email address and a picture of an older model VOLVO car, which appears from Annex A to the Response to have been in use since the website commenced operating. The background to each page is a repeating pattern of the words “VOLVOSPARES” each superimposed on what appears to be a faded, mauve or purplish oval disc.
The Complainant contends that this oval device will give the impression of an affiliation or association with the Complainant as the colours are said to be the traditional VOLVO colours blue and white.
The representation of the Complainant's Swedish trademark, No. 33,149, included in the Complaint does show the word VOLVO depicted in white lettering against a dark oval background. The Complaint does not include evidence of this device in use, or particularly in use in modern times. The Complainant's website does show an image of the word VOLVO depicted on a dark blue band across a silver circle or ring with an arrow pointing to one o'clock. The blue colour is different to that used on the Respondent's website which is more mauve or purplish, bearing in mind that individual monitor colour settings may affect how a colour is displayed.
Considering the Respondent's website as a whole and each specific page, the Panel finds it does not misrepresent any association with the Complainant (or the VOLVO group). It represents nothing other than what appears to be true – that the Respondent offers for sale from the website parts for VOLVO vehicles. On balance, the website does not have an appearance which suggests it is likely to be mistaken for an official or authorized site of the Complainant or the Volvo group. In the circumstances, the Panel finds that it is most unlikely that anyone would have been misled by the website even before the disclaimer was added.
While the disputed domain name has obvious commercial potential, there is no evidence that the Respondent has been attempting to corner the market in VOLVO domain names. The Complainant itself claims to have over 1,000 domain names registered, albeit in a range of gTLDS and ccTLDs. Nor is there any evidence that the Respondent has engaged in a pattern of registering other famous brands as domain names.
The Panel notes that the Complainant contends that the photographs of VOLVO vehicles appearing on the entry page to the Respondent's website are copyright works. There is no proof of the copyright ownership. In any event, it would seem wholly out of proportion to strip the Respondent of a domain name, which he has apparently been using for more than 10 years mostly without objection from the Complainant, on the basis of alleged copyright infringements on one page of that website. The Complainant's remedy for such infringements lies in copyright law.
On the record in this case, therefore, the Panel finds that the Respondent has rights or legitimate interests in the domain name.
It is clear that the Respondent knew about the Complainant's trademark rights when the disputed domain name was registered. As the Panel has found that the Respondent has rights or legitimate interests in the domain name and there is no evidence that the Respondent has been misrepresenting his business either to the public generally or to particular customers as associated with the Complainant, given the above findings, the Panel must find that the domain name has not been registered or used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: February 10, 2009