WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Kyung Won Yang
Case No. D2011-0178
1. The Parties
Complainant is Volvo Trademark Holding AB of Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
Respondent is Kyung Won Yang of Seong nam, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <volvobil.com> is registered with ! #1 Host Japan, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2011. On February 1 and 3, 2011, the Center transmitted by email to ! #1Host Japan, Inc. a request for registrar verification in connection with the disputed domain name. On February 3, 2011, ! #1 Host Japan, Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 25, 2011.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 14, 2011. 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
Complainant is the owner of a global trademark registration portfolio. Some of Complainant’s trademark registrations go back to the 1950’s. Said trademarks have been intensively registered ever since, with the Office for Harmonization in the International Market, the United States Patent Trademark Office, the Swedish Patent Office, and other offices around the world.
The disputed domain name <volvobil.com> was registered on January 15, 2011.
5. Parties’ Contentions
Complainant is a corporation which owns the VOLVO trademark throughout the world and licenses this trademark to AB Volvo and Volvo Car Corporation for use in connection with their respective businesses.
Complainant’s predecessors in interest and licensees have been selling cars, trucks, buses, construction equipment, marine and industrial engines, components for airplane and rocket engines and many others goods and services under the VOLVO trademark throughout the world for many decades, beginning in the 1920’s.
The VOLVO mark is well recognized as a symbol of the highest quality in vehicles and other goods.
The reputation associated with Complainant’s mark is excellent by virtue of the quality of Complainant’s goods and services.
In many previous proceedings under the Policy, Complainant’s VOLVO mark was found to be famous.
1. The disputed domain name is confusingly similar to Complainant’s VOLVO mark
The trademark VOLVO is exclusively associated with Complainant.
The disputed domain name is confusingly similar to Complainant’s trademark and trade name VOLVO mark. The “volvo” part of the disputed domain name is identical to the VOLVO trademark.
The term “bil” means “car” in Swedish and also in Danish and Norwegian. The addition of such a generic term increases the likelihood of confusion.
Said term “bil” in conjunction with the trademark VOLVO does nothing more than generically describe the primary product which Complainant, through its affiliated companies, sells under the VOLVO trademark.
According to previous UDRP panel decisions under the Policy, VOLVO is a famous trademark (see e.g., Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338; Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. D20001-0001; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. DNU2001-0001; Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445, among others).
2. Respondent has no rights or legitimate interests in the disputed domain name
Respondent has no rights or legitimate interests in the disputed domain name, based on Complainant’s continuous and long prior use of its mark and trade name VOLVO.
When Respondent selected VOLVO as part of its domain name, Respondent was on constructive notice of Complainant’s trademark rights. Respondent cannot conceivable claim to have been unaware of the famous VOLVO trademark, or the fact that the mark is owned by Complainant.
Respondent cannot deny that it did not have permission or authorization to use the trademark VOLVO as part of the disputed domain name.
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The disputed domain name is parked at a website where a web search may be conducted and links to websites to Complainant’s cars as well as Complainant’s competitors are displayed (Toyota, Ford, Nissan, VW).
The various search results on the website to which the disputed domain name is linked are sponsored results which indicate that Respondent is obtaining revenue through click-through advertisements and sponsored links.
At the time the Complaint was filed, at the top of the website to which the disputed domain name resolves, there was a notice that “DOMAIN MAY BE FOR SALE”. Said site was linked to “www.sedo.com” where the disputed domain name was listed for sale.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
3. Respondent registered and uses the <volvobil.com> domain name in bad faith.
There is no reason for Respondent to use Complainant’s mark in its domain name other than to try to sell it to Complainant and prevent Complainant from registering said domain name, or for other commercial gain.
There is simply no explanation for the registration and use of the disputed domain name by Respondent except for bad faith.
Respondent is using the disputed domain name to resolve to a website where searches may be conducted and sponsored links are provided. The domain name is “parked”. Among the links available at the website to which the disputed domain name resolves are those to Complainant’s competitors.
Complainant notes that at the time the Complaint was filed the disputed domain name was for sale. By offering to sell the domain name, Respondent is using the domain name in violation of paragraph 4(b)(i) of the Policy – for the purpose of selling or renting the domain name.
Respondent also holds other domain names. A collection of WhoIs printouts for domain names held by Respondent or by a different individual but with the same email address as Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In this administrative proceeding, Complainant must prove that each of these elements is present.
As Respondent has failed to submit a Response to Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487.
A. Identical or Confusingly Similar
Complainant is the owner of the VOLVO trademark. The disputed domain name <volvobil.com> is confusingly similar to said trademark. The disputed domain name incorporates the trademark VOLVO in its entirety, with the addition of the term “bil” which means “car” in Swedish. This term is generic.
The addition of said generic term “bil” to the trademark VOLVO does not add a distinctive character to the disputed domain name, and it does not eliminate the confusing similarity (see Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424. See also PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184.
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the confusing similarity analysis, a panel usually does not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. (See Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627).
Considering that the disputed domain name <volvobil.com> is confusingly similar to Complainant’s trademark VOLVO, the first requirement of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a disputed 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 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. (Policy, paragraph 4(c)).
Respondent has not submitted evidence to show the existence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, Complainant’s Complaint, not contested by Respondent, shows that said Respondent is using the disputed domain name to divert Internet users to a website with links to competitors of Complainant, like Toyota, Ford, Nissan or VW. In this Panel’s view, this cannot be in good faith. The Paragon Gifts Holdings, Inc. v. Click Cons. Ltd, WIPO Case No. D2007-0304.
Respondent has not proven to have been commonly known by the disputed domain name. The trademark VOLVO is famous around the world. VOLVO cars can be found globally. This trademark is highly publicized around the world. Therefore, there is no evidence at hand that Respondent could have chosen or used the disputed domain name in a legitimate manner.
The Panel finds that Respondent’s use of the disputed domain name is not legitimate and that it is also commercial. Having the disputed domain name resolve to a website with links to Complainant’s competitors has the objective of misleadingly diverting consumers.
Additionally, Complainant’s uncontested assertions and evidence show that the disputed domain name was for sale at the time the Complaint was filed, by being listed on “www.sedo.com”. The Panel finds that this use is commercial, not legitimate and in bad faith.
The Panel finds no rights or legitimate interests on the side of Respondent. The second element of the Policy has been met.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the Panel’s view, by linking the disputed domain name to “www.sedo.com”, thus offering said domain name for sale in a website that solicits offers in exchange for the domain name, Respondent has placed himself within paragraph 4 (b)(i) of the Policy.
Additionally, the case file contains evidence showing that the disputed domain name resolves to a website that contains links to some of Complainant’s competitors, where competing cars are offered, like Toyota, Ford, Nissan or VW, which proves that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s mark VOLVO as to the source, sponsorship, affiliation or endorsement of the website. This conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Owens Corning v. NA, WIPO Case No. D2007-1143.
The third element of the Policy has been met.
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 <volvobil.com> be transferred to Complainant.
Dated: March 28, 2010