WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Brendan Conboy
Case No. D2011-0558
1. The Parties
The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Brendan Conboy of Galway, Republic of Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <volvooceanrace2012.com> is registered with GoDaddy.com, Inc.(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2011. On March 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2011, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2011. The Response was filed with the Center on April 25, 2011.
The Center appointed J. Nelson Landry as the sole panelist in this matter on May 10, 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.
Supplemental filings by the Complainant and the Respondent were submitted on May 5, 2011 and May 24, 2011, respectively.
4. Factual Background
A. Facts adduced in evidence in the Complaint
The Complainant is a holding corporation which owns the VOLVO trademark throughout the world and the said trademark is used by its licensees, AB Volvo et Volvo Corporation, equal co-owners of the Complainant, in connection with the manufacture and sale of cars, trucks, buses, construction equipment, marine and industrial engines, components for airplanes and rocket engines and many other products and services as detailed in the numerous trademark registrations that have been obtained in the United States of America, from the World Intellectual Property Organization and furthermore, in Ireland where there are seven trademark registrations for VOLVO between 1955 and 1996, including motor land vehicles (the “Trademark VOLVO”).
While the predecessor of the Complainant was established in 1915, it is in 1927 that the construction of VOLVO cars started, trucks in 1928, bus chassis and marine engine production in 1934. It is since 1950 that the VOLVO Trademark has been used in association with cars and other products in the United States of America.
Prior to 1998, there was a sailing world race event operated and owned by Whitbread Round the World Race. The Complainant purchased the rights to this race and changed its name to “Volvo Ocean Race” which is also known as the premier world ocean race and its activities are available on its website maintained at “www.volvooceanrace.com”.
Since the acquisition of the rights in 1998, Volvo has used the Trademark VOLVO OCEAN RACE in connection with the publicity pertaining to the said race and goods and services relating thereto. The Complainant applied to register the Trademark Volvo Ocean Race on September 25, 1998 and obtained its registration on August 14, 2001(the “Trademark VOLVO OCEAN RACE”).
The Complainant registered the domain name <volvooceanrace.com> on March 14, 1998 and further registration of domain names incorporating the Trademark VOLVO OCEAN RACE with the suffix “.net” and “.org” on March 13, 1998, “.info and .biz” in 2001 and “.tv” in 2000.(Exhibit J of the Complaint).
The next Volvo Ocean Race event for 2011-2012 starts on October 29, 2011 and terminates in Galway, Ireland in 2012.
The Complainant has been already involved in 25 domain name dispute proceedings before WIPO UDRP panels and in particular in respect of the domain names <thevolvooceanrace.com>, <volvooceanrace.nu> and <volvooceanrace.mobi> and others incorporating the VOLVO Trademark to which various descriptive or generic terms were added such “insurance, exhaust, vehicle, club, cars, world, lamps” and others. In each case, the Complainant was successful in having the domain names transferred to it.
On March 12, 2010, the Respondent registered the domain name <volvooceanrace2012.com>.
The Complainant did not give permission or authorization to the Respondent to use and incorporate the Trademark VOLVO or the Trademark VOLVO OCEAN RACE either within the disputed domain name or otherwise.
The Respondent is not an authorized representative or licensee in respect of the VOLVO or VOLVO OCEAN RACE Trademarks.
On December 2, 2010, the Complainant sent a cease and desist letter to the Respondent outlining its rights in the Trademarks VOLVO and VOLVO OCEAN RACE objecting to their use in the disputed domain name and requesting the transfer of said disputed domain name. The Respondent did not answer the said letter.
The Respondent has registered and owns other domain names namely <ibuyoften.com> on January 9, 2009, <ibuyelectrical.co.uk> on September 23, 2009 and <pharmaqs.com> on February 24, 2009.(Exhibit M of the Complaint).
B. Facts adduced in the Response
The Response was received by the Center on April 25, 2011, at around 1 am. Given that the Respondent appears to be located in Ireland, which is one hour behind Geneva time, the Panel has decided to consider the Response. The Respondent who represents himself provided a Response with 27 paragraphs of either facts or representations followed by a further set of paragraphs in which the Respondent comments on each of the 52 paragraphs of factual evidence and representations of the Complainant either in respect of paragraphs regrouped such as 1-4 or individual paragraphs.
The Volvo Ocean Race commences in 2011, not in 2012.
Irish is the national language of the Republic of Ireland where the Respondent resides.
The Respondent registered “Vol Vooce Anrace” as its business concern at an undisclosed date.(Exhibit 3 of the Response).
The Google Adsense account (Exhibit 1 of the Response) discloses revenue of EUR 1.24.
C. Facts adduced in evidence by the Complainant in its Supplemental Filing
A Google search for “volvo” discloses only results for products of the Complainant and its licensees.
A Google search for “volvo ocean race” discloses results only for the “volvo ocean race” event.(Exhibit N to Supplemental Filing of Complainant).
The content of Exhibit 3 to the Response which purports to be the registration of the Vol Vooce Anrace business name of the Respondent does not provide or disclose the date of registration.
The Vol Vooce Anrace business name was registered on March 14, 2011.(Exhibit O of the Supplemental filing).
The Google Adsense account of the Respondent uses or discloses “Volvo1” as the Respondent’s account name.
The announcement or disclosure of the Port Galway, in Ireland, as the finished port of the VOLVO OCEAN RACE 2011-2012 event was made on March 10, 2010, two days before the Respondent registered the disputed domain name.
The Respondent resides in Galway, Ireland.
D. Facts adduced in evidence by the Respondent in his Supplemental Response
“Volvo” is from the Italian verb “volvere”, therefore, a generic term.
5. Parties’ Contentions
The Complainant represents that its predecessors in interests since at least 1925 and its licensees, since at least 1928, have been manufacturing and selling cars, trucks, busses, construction equipment, marine and industrial engines, component for airplanes and rocket engines in association with the VOLVO Trademark and at least since 1950 in the United States of America in association with cars and other products.
According to the Complainant, by reason of the long and extensive use by its licensees, the Trademark VOLVO has become famous, one of the best known trademarks in the world today, recognized as a symbol of the highest quality in vehicles and other goods and is exclusively associated with the Complainant. Since its acquisition of the rights to the Whitbread Brown the World Race it changed the name of the race to Volvo Ocean Race, used the Trademark VOLVO OCEAN RACE in association with this ocean race as well as in association with the publicity pertaining to the race and the goods and services associated therewith and finally, applied for and obtained several registrations for VOLVO OCEAN RACE as a trademark which has become well-known pursuant to its long and extensive use.
The Complainant further represents that within the 25 UDRP domain name dispute proceedings in which it was involved as a complainant, in at least 18 of the decisions the panels have commented and determined that the Trademark VOLVO was a famous trademark and further more that by reason of the fame of the VOLVO Trademark and the business of some respondents “it is clear that Respondent was fully aware of the existence of the Complainant and its affiliated company and of the rights in the Trademark VOLVO at the time he registered the domain name” and similarly in Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292.
The Complainant submits that the disputed domain name is confusingly similar to the Trademarks VOLVO and VOLVO OCEAN RACE of the Complainant, the “volvo” part being identical to the famous VOLVO Trademark and “volvo ocean race” identical to the corresponding Trademark, and furthermore that the addition of the generic “2012” enhances the similarity between the two trademarks and the disputed domain name since “2012” simply identifies the year in which the race will terminate.
The Complainant concludes its representations on confusing similarity in stating that the disputed domain name corresponds to and is confusingly similar with the several domain names of the Complainant which consist of its Trademark VOLVO OCEAN RACE with domain name suffixes such as “.com”, “.net” and others, as mentioned herein in that Internet visitors will think that they are all part of the same family of “volvooceanrace” domain names.
According to the Complainant, by reason of the continuous and extensive prior use of its Trademarks VOLVO and VOLVO OCEAN RACE, the Respondent was under constructive notice of the Complainant’s rights and cannot conceivably claim his unawareness of the famous VOLVO Trademark and well-known VOLVO OCEAN RACE Trademark and furthermore, cannot deny that it did not have permission or authorization to use these Trademarks within the disputed domain name and could not claim having any rights or legitimate interests in the disputed domain name.
Upon observing the ads by Google displayed at the website corresponding to the address of the disputed domain name, the Complainant contends that the Respondent receives payment for click-throughs on these advertisements and relies on the earlier findings of UDRP panels which have found that such activities demonstrate a lack of legitimate rights or interests in the disputed domain name. e.g., The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057 and Curtis Jackson v. WhoisGuard, WIPO Case No.. D2006-0070. Pursuant to its statement that the Respondent is not authorized to use the VOLVO or the VOLVO OCEAN RACE Trademarks, is not a licensee and furthermore that the Respondent is not commonly known as “Volvo” or “Volvo Ocean Race”, the Complainant concludes that the Respondent has not rights or legitimate interests in the disputed domain name.
The Complainant, on the basis that it sees no reason for the Respondent’s use of its Trademarks in registering the disputed domain name other than try to sell it to the Complainant or for other commercial gain and to prevent the Complainant for registering the said domain name, contends that the disputed domain name was registered in bad faith with full knowledge of the Complainant’s rights therein, it being inconceivable that the Respondent was unaware of the VOLVO Trademark in view of the fame associated therewith.
According to the Complainant, such awareness of the Complainant and its VOLVO OCEAN RACE Trademark is further supported by the fact that the Complainant already owns six domain names incorporating the VOLVO OCEAN RACE Trademark and in this respect relies on similar panel decisions stating their views on the inconceivable unawareness of the existence of the Trademark at the time of registration. See Volvo Trademark Holding AV v. Roger Nichols, WIPO Case No. DTV2001-0017 and Volvo Trademark Holding AB v. Soeren Groenlund, WIPO Case No. DNU2002-0003. Similarly in another UDRP decision, it was held “this Panel does not see any conceivable use that could be made by the Respondent of this particular domain name without the Complainant’s authorization that would not amount to a violation of the Complainant’s rights.” See Volvo Trademark Holding AB v. Visual Enginering, S.L., WIPO Case No. D2008-1409, on which the Complainant relies.
The Complainant concludes its representations of registration in bad faith of the disputed domain name in stating that the intended registration was to confuse the purchasing public into believing that the Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the Respondent by incorporating the famous VOLVO and VOLVO OCEAN RACE Trademarks along with the generic date “2012” in the disputed domain name.
Upon simply noting the absence of an explanation for the registration and use of the disputed domain name, the Complainant contends that the disputed domain name is used in bad faith by the Respondent. This use in bad faith is further confirmed by the presence of the ads by Google listed on the website corresponding to the disputed domain name address and the fact that there are click-through advertisements which generate revenue for the Respondent.
The Complainant further notes the blatantly opportunistic use of the disputed domain name and refers to Edgar Rice Burroughs, Inc. v. MySexPortal.net, Dejan Nikitovic, WIPO Case No. D2002-1169, in this respect and the occurrence “when a domain name is obviously connected with such a well-known product that it is used by someone with no connection with the product which suggests opportunistic bad faith”; see, e.g., Veuve Clicquot Ponsardin, Maison Fondée en1772, v. The Polygenix Group, WIPO Case No. D2000-0163.
According to the Complainant, the use of the disputed domain name is a blatant infringement and causes the dilution of the strength of its Trademark rights, will cause the inevitable conclusion that the public will assume that the disputed domain name belongs to the Complainant or that its use has been authorized or endorsed by the Complainant and that this confusion will continue as long as the confuse public will believe that the Complainant does not object to the use of its famous Trademark with the generic wording in the disputed domain name.
The Complainant concludes its representations of bad faith use of the disputed domain name in noting the infringement and dilution of its VOLVO Trademark which results from an intent and purpose of creating a likelihood of confusion and appropriation of the considerable goodwill and reputation of the Complainant’s Trademark.
The Respondent denies that the disputed domain name should be transferred to the Complainant for the following reasons. The Respondent submits that it had a legitimate reason to purchase the disputed domain name and further that the VOLVO Trademark does not appear on his website or that said website is not involved in anyway with the Complainant or any of its holdings.
The disputed domain name was purchased in 2010 to secure his own rights to register an Irish business name, Vol Vooce Anrace (Exhibit R-3 of the Response), for the promotion of his activities in 2012 in using his website that will be operated in both Irish and English languages which website activities are due to be launched on November 20, 2011, in the tourism sector, primarily in “Gaeltacht” in Connemara, Co. Galway.
The Respondent further represents that the presence of advertising placed on a website by the registration company is normal, not of his own choice and furthermore, the VOLVO Trademark is not used nor referenced within the website and the website is not an attempt to act fraudulently to gain any commercial benefit from clients perceiving it as part of the group of websites of the Complainant and concludes that the business name Vol Vooce Anrace does not infringe any copyrights or trademarks of the Complainant, considering that the word “volvo” is a verb and a common word in the Italian language.
The Respondent sees in the present situation a matter of coincidence open to interpretation in that the domain name he desired was already taken with “.com” and therefore, the alternative was to add “2012” as the year of its launch which happens to be the year that Volvo Ocean Race shall commence in 2012. According to him, this situation is a matter of one’s perspectives herein, in that contrary to the Complainant’s view, the wording of the disputed domain name does not impede on the Trademark VOLVO reiterating that Vol Vooce Anrace is a registered business name of the Respondent in the Republic of Ireland and therefore is pursuant to a legitimate interest.
The Respondent reiterates in respect of the content of the website, the common practice of the majority of Internet Service Providers to place advertisements on the home page of a website while it is under construction.
The Respondent denies any intent or activity of bad faith and further states that the Complainant’s assumptions are not based on facts and that he never made any approach or offer to sell the disputed domain name nor for resale as a cybersquatter.
In respect of commercial gain, the Respondent provides as evidence a profit from Google Adsense program of EUR 1.27 which is far from a massive commercial gain and reiterates that instead of evidence submitted by the Complainant, it is only assumptions of the Respondent’s knowledge and intent based on information and belief of the former.
According to the Respondent, the business name Vol Vooce Anrace is clearly distinguishable from the Trademarks VOLVO and VOLVO OCEAN RACE and does not infringe the rights therein. The Complainant already uses variations of its domain name but only refers to one in branding its ocean race activities.
According to the Respondent, the Complainant’s products are clearly not represented on the website at the address of the disputed domain name and the associations made by the Complainant are not represented on the said website.
C. Submissions in Complainant’s Reply
In respect of the Respondent’s contention that the worldwide famous Trademark VOLVO is essentially generic, the Complainant reiterates its incontestable United States trademark registration status for the Trademarks VOLVO and VOLVO OCEAN RACE along with numerous registrations thereof around the world and further states that a Google search for the term “volvo” retrieves results only for the Complainant and its products and further Google search for “volvo ocean race” retrieves results only for the Volvo Ocean Race and therefore its VOLVO famous trademark cannot be challenged.
In respect of the Respondent’s claim of Vol Vooce Anrace being the name of a business to be started, the Complainant, in reference to Exhibit 3 to the Response, notes that this document does not provide a date of registration. The Complainant adduces in evidence Exhibit O which shows that the Vol Vooce Anrace business name was registered on March 14, 2011, a year after the disputed domain name was registered and over three months after the Complainant sent its cease and desist letter to the Respondent.
While the Respondent claims to have registered the disputed domain name in March 2010 to support a planned business according to the Complainant, the Complainant notes that the Respondent has not presented any evidence of a business plan or activity other than a registration obtained in March 2011. The Complainant relies of the finding of the panel in Villeroy & Boch AG v. Mario Pingterna, WIPO Case No. D2007-1912, which had stated that “ this intent does not confer any rights or legitimate interests as: (i) this is not the current use; (ii) the current use is neither a legitimate noncommercial nor a fair use within the meaning of paragraph 4(c)(iii) as it involves sponsored links and advertising pop-ups (and therefore has a commercial purpose) and involves deceptive use of the Complainant’s trademark (sic tradename); (iii) there are not any demonstrable preparations for this use in respect of a literary work that might support rights or legitimate interests.”
The Complainant notes that notwithstanding the allegation that “vol vooce anrace” is Gaelic, the Respondent did not present any support for this contention nor any translation as to what this wording might mean in English for one good reason, according to the sworn evidence of the Complainant, this is not Gaelic language and this is further confirmed by the Google search results for this alleged Irish expression which all correspond to “Volvo Ocean Race”.
While the Respondent denies having registered and used the disputed domain in bad faith in referring to the support of his Google Adsense account which allegedly shows that he did not make money from the advertisement seen on the website corresponding to the disputed domain name, the Complainant observes that the Respondent chose the name “Volvo 1” as his account name which does not correspond to the future business name he registered and on this basis, the Complainant represents that this selection of his account name supports its contention that the Respondent is attempting to trade on and profit from its famous VOLVO Trademark.
The Complainant relies on the panel decision in Villeroy & Boch AG v. Mario Pingterna, supra, where that the panel noted that notwithstanding the choice of advertisement on a website parking page and a disclaimer, along with a statement that the Respondent had not receive any money or discount from the website, these facts do not exclude bad faith under paragraph 4(b)(iv) of the Policy since “for commercial gain” stated therein is not necessarily a gain to be derived by the Respondent himself since the latter is allowing a third party to reap the profit of its wrongful conduct and the panel further notes that the Respondent had, at all times, been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page. See also National Bedding Company L.L.C. v. Sleepyboyz of Prattville, LLC, WIPO Case No. D2009-1449, which decision stated the responsibility of the respondent for the content of its website.
The Complainant further claims that the passive holding of the disputed domain name in the absence of any concrete business plan constitute further evidence of the Respondent’s bad faith. See Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179. The Complainant concludes its further representations in reiterating that it is inconceivable that the Respondent was unaware of its worldwide famous VOLVO Trademark when he registered the disputed domain name particularly when said business name was registered very recently, subsequent to being put on notice of the Complainant’s objection to the registration and use of the disputed domain name and noting the absence of any concrete plans of the Respondent to start a business, the Complainant having stated that the fact that the said disputed domain name was registered two days after it was announced that the finish port for the Volvo Ocean Race 2012 is Galway where the Respondent resides (Exhibit R of the Complainant’s Supplemental Filing) and submits that, in its view, this is more than mere coincidence but rather confirms that the Respondent has clearly acted in bad faith.
D. Submissions in Respondent’s Supplemental Response
The Respondent represents that the term “volvo” is generic, namely from an Italian verb “volvere” of which “volvo” is the first person singular, present indicative, according to Exhibit SR-1 of the Respondent. The Respondent claims that, on the one hand, the famous status of the VOLVO Trademark may be true or false depending on jurisdiction and context of use while, on the other hand, the word “volvo” could be deemed generic by the common uneducated Italian person. The Respondent reiterates that it has not used the word “volvo” in his website and in his business operations.
The Respondent further reiterates that he is building a business website and although being currently built, he has activated the website with a precursor thereof now live online as illustrated in Exhibits SR-2, SR-3 and SR-4 of the Supplemental Filing of the Respondent which feature touristic sceneries and attractions in his area. The future business and due date to be launched remains November 20, 2011, after the start of the ocean race and reiterates that this is a legitimate business registered to conduct business in the Republic of Ireland, under the name Vol Vooce Anrace and reiterates his claim that the business does not impede on the Complainant’s business or brand.
In respect of the presence of “volvo1” in the GoDaddy Adsense account, according to the Respondent, “this is simply a snippet version of the business name” and reiterates that it is common practice for an Internet service provider to place advertisement of their registrant domains and to confirm or support same, the Respondent offers Exhibits SR-5 to SR-9 as examples. The Respondent claims that he “never promoted the website by ways of advertisements or submissions to search engines”. The Respondent took control of the advertisements of its site by placing them there rather than letting the ISP provide their owned adverts and make potential exploit of the domain name. The Respondent did take control and did not benefit in any great financial way from the advertising program” (Exhibits SR-10 and SR-11 to the Suplemental Filing of the Respondent).
The Respondent submits that as a result of this administrative proceeding, the website is now in operation and due to be released at a later date for the 2012 market place and that the registration was not done in bad faith as there is a business and that there is no requirement to make the business effective today as it is being built for release in November 2011.
The Respondent concludes is representations in reiterating that he is conducting a legitimate business under the disputed domain name to which he has complete and total rights and which does not impede on the VOLVO Trademark and again, refers to his Exhibits SR-2, SR-3 and SR-4 to the Supplemental Filing of the Respondent to support his legal rights and considers it unfortunate that the Complainant does not agree that “they have a business as much right as the Respondent to register a similar domain of which they hold many… and the Complainant has no real use for this website domain name”.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Comments on availability and allowance on additional pleadings
The Panel having noted that the Respondent was not represented or assisted by counsel, realized in studying the Response and in the light of the three criteria herein to be addressed, that not only the Respondent was self representing himself but most likely was involved for the first time in such a domain name dispute since beyond expectation, the Respondent did not address any evidence on some of the principal points and raised new matters of which the Complainant had no knowledge. The Panel thought this case was an exceptional one where both parties should have the benefit of a further exchange of pleadings or submissions and therefore, accepted the Complainant’s Supplemental Filing and provided the Respondent an opportunity to respond to the Complainant’s further evidence and complete his own evidence.
A. Identical or Confusingly Similar
The Companies AB Volvo et Volco Corporation co-owners and licensees of the Complainant have been using the Trademark VOLVO in association with cars and trucks since at least 1928 and subsequently expanded the classes of products and services provided under the said Trademark and also registered the said Trademark in numerous countries in the world including in Europe, the United States of America and in the Republic of Ireland, where the Respondent resides.
In 1998, pursuant to the acquisition from Whitbread Round the World Race, the Complainant adopted and registered the Trademark VOLVO OCEAN RACE and has used it thereafter in association with this premier world ocean race and its related activities, goods and services, including the publicity pertaining thereto.
The Respondent not denying the rights and fame claimed by the Complainant in its Trademark VOLVO, nevertheless raises the point that “volvo” is generic as part of Italian verb “volvere”. This proceeding is not the forum where the distinctive character of a trademark may be challenged, particularly where the numerous applications in several countries have been examined, published for possible opposition and registered.
The Panel finds that the Complainant has substantive rights in the Trademarks VOLVO along with significant goodwill associated thereto by reason of its extensive use and fame, which fame has been acknowledged by numerous panels in previous UDRP decisions with which this Panel concurs.
The Panel also finds that the Complainant has rights in the Trademark VOLVO OCEAN RACE which it adopted, registered and has used for over 12 years as a Trademark in association with its race activities and also within the several domain names incorporating the said Trademark as mentioned herein.
The disputed domain name does incorporate in total the VOLVO and VOLVO OCEAN RACE Trademarks to which the calendar year “2012” and the gTLD suffix “.com” have been added. The addition of the generic figure “2012”, which identifies the year in which the next race to take place will terminate, does not diminish but rather enhance the confusing similarity of the disputed domain name with the VOLVO and VOLVO OCEAN RACE Trademarks, in particular Internet users upon seeing the disputed domain name will most likely believe it to a one of the family of “volvooceanrace” domain names.
The Panel finds that the disputed domain name is confusingly similar with the Trademarks VOLVO and VOLVO OCEAN RACE.
The first criterion has been met.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark.
Under the Policy, it is stated in paragraph 4(c) that a respondent can demonstrate rights and legitimate interests by one of the three following options:
“(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 submitting a Response and Supplemental Filing, the Respondent has adduced evidence relevant to these options.
Based on the evidence submitted by the parties, the Panel notes the following:
a) the disputed domain name was registered on March 12, 2010,
b) the Complainant sent a cease and desist letter to the Respondent, on December 4, 2010, thereby notifying him of its rights in the Trademarks VOLVO and VOLVO OCEAN RACE and its objections to the registration and use of the disputed domain name, thereby putting the Respondent on notice of this dispute and requesting him to transfer the disputed domain name,
c) the Respondent registered the business name Vol Vooce Anrace on March 14, 2011,
d) it is only in his Supplemental Filing that the Respondent provided evidence that he had commenced the preparation of the website relating to the disputed domain name and produced new web pages showing his tourism activities (Exhibits SR-2 to SR-4).
On balance, the Panel finds that the Respondent did not produce sufficient evidence that under (i) herein, he had use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, under (ii) that he was commonly known by that name nor in respect of (iii) did he produce evidence of making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. A significant element in respect of point (iii) is the confusing similarity of the disputed domain name with the Trademarks VOLVO OCEAN RACE and VOLVO as Panel has found under point 6A herein.
The Respondent, notwithstanding two pleading opportunities in this proceedings, did not show any sufficient evidence of conception, adoption or registration of the said business name not only before the registration of the disputed domain name but before the reception of the letter from the Complainant in December 2010 nor did he provide any sufficient evidence or argument to explain the nature and meaning of this fanciful business name, assuming it is not derived from the Complainant’s Trademark, as the Respondent. The Panel therefore finds that the Respondent did not rebut the prima facie evidence and argument presented by the Complainant.
As a result of this evidence the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name 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 the 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 trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above. No evidence was adduced which would bring into consideration the points under 4(b)(i) of the Policy the Respondent did not registered the disputed domain name for the purpose of selling it for an excessive valuable consideration, (ii) nor in order to prevent the Complainant and owner of the Trademarks VOLVO and VOLVO OCEAN RACE in a corresponding domain name within a pattern of such conduct by the Respondent nor under (iii) for the purpose of disrupting the business of the Complainant, who is not a competitor of the Respondent.
In respect of paragraph 4 (b) (iv), the Panel has to determine whether the Respondent with the registration and use of the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of his website or service on his website or location.
The registration of the disputed domain name appears not to be the first domain name registration made by the Respondent as mentioned previously, the Respondent appears to have already registered three other domain names in the 2009, all incorporating generic terms and English sentences such as “ibuyoften, ibuyelectrical and pharmaqs” which are all terms in the dictionary. Despite the two pleading opportunities, the Respondent did not explain how he came about to conceive and adopt the expression “vol vooce anrace” notwithstanding its phonetic similarity if not identity when spoken rapidly or even more so written without any spacing in a domain name.
The Panel notes that nowhere in his pleadings the Respondent denied awareness or knowledge of the Complainant’s Trademarks VOLVO and VOLVO OCEAN RACE. It would have been unbelievable for this Panel that the Respondent, articulated and resourceful as it appears to be, would not have been aware of the VOLVO well-known, if not famous, Trademark as held by other panels before and agreed upon by this Panel, even in Ireland where there are 7 registrations for the Trademark VOLVO. It is inconceivable to this Panel that the Respondent was not aware of the world ocean racing event promoted for over 12 years by the Complainant under the Trademark VOLVO OCEAN RACE. The Respondent did not even try to explain the fact that he registered the disputed domain name March 12, 2010, two days after according to Exhibit R of the Complaint, as that of the public announcement that the said race would terminate in Galway, his own town. To this Panel, there is little or no room for any coincidence here.
In the Panel’s view, the disputed domain name must have been registered with knowledge of the VOLVO and the VOLVO OCEAN RACE Trademarks of the Complainant and matters remained quiet from March 12, 2010 until December 2, 2010, when the Complainant sent its cease and desist letter, outlining its Trademark rights, objecting to the disputed domain name and requesting the transfer thereof. In the Panel’s view, it is only after another three months that on March 14, 2011, the Respondent, most likely with the Trademark VOLVO OCEAN RACE in mind, adopted and registered the fanciful business name Vol Vooce Anrace, the significance or the different source and language of which has not been explained despite the submissions of the Complainant in the Complaint and its Supplemental Filing. While the Respondent provided evidence of the registration of the business name, he provided only the four of the six details, namely the type, number, name and address, but not the next two, the date of registration and status, which were provided by the Complainant (Exhibit O of the Supplemental Filing). The Panel does not see in this omission any confirmation of good faith, rather the contrary.
For the above reasons, the Panel finds that the disputed domain name was registered in bad faith.
Not only the Respondent has not explained how he came about to choose the business name Vol Vooce Anrace and register it several months after he had registered the disputed domain name, there is no evidence that this business name was even contemplated when he registered the disputed domain name which registration was made on March 12, 2010, two days after the Complainant announced that the race it was arranging and promoting under its Trademark VOLVO OCEAN RACE would terminate in Galway, according to Exhibit R of the Supplemental Filing of Complainant.
Although the Respondent had not yet composed its website contents, soon after the registration, it was used as a parking place with various links therein. In Exhibit K adduced in evidence by the Complainant, within six hyperlinks on a single page, we note the presence of two relating to Volvo cars, “Used Volvo Knoxville”, “Cheap Priced Volvo” and another car dealer “S60 Sedan vs Buick Regal”, Buick being a model of General Motor Corporation and the address of the website does incorporate the disputed domain name which includes the VOLVO Trademark, these are facts difficult to reconcile with his statement that the Trademark VOLVO does not appear on his website page.
Furthermore the disputed domain name does incorporate in total the Trademark VOLVO OCEAN RACE and provides an opportunity to take advantage of all the Internet users or visitors that would have thought or think they would be visiting a website associated with the Complainant, particularly as another website responding to the disputed domain name that was and still is most likely, if not inevitably, be considered as one of the family of the domain names of the Complainant incorporating its Trademark VOLVO OCEAN RACE. This association by the presence of the VOLVO OCEAN RACE trademark is causing confused Internet visitors to think that this site is sponsored, affiliated with or endorsed by the Complainant. It is not necessary that the products of the Complainant or its Trademark VOLVO be present in the website of the Respondent as it stands now, it was already there in its address in the disputed domain name.
As it was represented by the Complainant, with the support of decisions in earlier proceedings, the Panel agrees with and adopts the statement therein: "it is also to be noted that the circumstances of bad faith are not limited to those set out in paragraph 4b)(i)-(iv). This can also occur when a domain name is “obviously connected with such a well-known product that is used by someone with no connection with the product which suggests opportunistic bad faith ". See Veuve Clicquot Ponsardin, Maison Fondée en1772, v. The Polygenix Group, supra.
The Respondent attempts to minimize and refute why the arguments of the Complainant that he is using the website under the address of the disputed domain name to post advertisements and benefit from click-through revenues, apparently limited to EUR 1.27. The fact of the matter remains that, as produced in evidence by the Respondent in his Supplemental Filing, he is promoting touristic events, festivals and other events in his city of Galway or thereabout in the National Park, Maumturk Mountains and the Connemara and Dogs Bay (Exhibits SR-2, SR-3 of the Respondent) with numerous others links to hotels in Galway, automobile products, namely TyreAware, i.e., Mobile Tyres, for new tires fitted and mobile puncture repair (Exhibit SR-5 of the Respondent), –and a GoDaddy.com page and invitation to construct and feature an advertisement entitled "Welcome: Galway events.com "( Exhibit SR-6 of the Respondent) and finally a GoDaddy.com invitation to make money with one's website, the page predominantly featuring "Cash Parking, Turn your parked domain into CASH, Make money from your domain's parked pages ", and then showing two plans to chose from, the basic plan which can earn 60% of advertising revenue and the premium plan offering to earn 80% of this advertising revenue on the park domain name.(Exhibit SR-8 of the Respondent). Does the Respondent want this Panel and visitors to believe that he does all this promotion free. He does not even state so for an obvious reason? The amount of income is not the criterion, what matters is that it is a commercial operation that is based on the likelihood of confusion with the Complainant’s trademark.
Nowhere in his representations and evidence the Respondent has attempted to show or explain how he would use the disputed domain name for noncommercial activities or functions that would not generate revenue and not trying to benefit from the confusing similarity. He did not deny nor explain that the domain name was registered two days after the Complainant has announced where its race will terminate in 2012, namely in the Respondent’s home town, Galway, Ireland.
In the Panel's view, the Respondent is commercially and financially benefiting from the confusion generated by the disputed domain name on Internet visitors and the evidence points in only one direction namely to generate revenue from such advertisements and in the Panel's view, as held by panels in earlier UDRP decisions, this is use of the disputed domain name in bad faith and the Panel finds accordingly.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <volvooceanrace2012.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <volvooceanrace2012.com> be transferred to the Complainant.
J. Nelson Landry
Dated: May 30, 2011