WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prevost Car Inc. and Volvo Group Canada Inc. v. Lori Cooper
Case No. D2011-1427
1. The Parties
Complainants are Prevost Car Inc. and Volvo Group Canada Inc., each of Greensboro, North Carolina, United States of America (“U.S.”), and represented by Kilpatrick Townsend & Stockton LLP, U.S.
Respondent is Lori Cooper of Urbana, Illinois, U.S., represented by Sheppard, Mullin, Richter & Hampton, LLP, U.S.
2. The Domain Name and Registrar
The disputed domain name <prevost.com> is registered with GoDaddy.com, Inc. (“Go Daddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 24, 2011. On August 24, 2011, the Center transmitted by email to GoDaddy a request for registrar verification in connection with one of two of the disputed domain names referenced in the original Complaint. On August 24, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the <prevost.com> domain name and providing the contact information and other details of the registration. On September 5, 2011, Complainants filed an amended Complaint limiting the Complaint to the current domain name.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 September 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2011.
On September 27, 2011, the due date for the Response, the Center received an email communication from Respondent. Respondent indicated that it had taken some time to retain counsel and was “currently going through the administrative process to make that representation official.” Respondent requested an unspecified amount of additional time to finalize its representation and submit its Response. The Center forwarded the request to Complainant, seeking its views. That same day, September 27, 2011, Complainants objected to the extension, pointing out that Respondent had been aware of the filing of the original Complaint in late August,1 as well as pointing to early correspondence it had sent to Respondent concerning the domain name. Counsel asserted that an extension of time would be prejudicial to its client and its intellectual property rights, would “reward Respondent for her bad faith and inexcusable delay”, and unnecessarily delay the proceedings.
On September 28, 2011, the Center advised Respondent that it was declining to extend the period for response in light of Complainants’ response, the timing of the request (on the due date for the Response), and the lack of any “exceptional circumstances” under the Rules, paragraph 5(d). The Center advised that any late Response would be forwarded to the Panel, to be considered in its discretion.
A Response was subsequently filed with the Center on October 5, 2011.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 6, 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.
Subsequently, the parties advised the Center, in a series of email communications, that they were engaged in meaningful discussions in an effort to resolve the matter and requested three successive 10-day suspensions of the proceedings. In a series of procedural orders, the Panel granted each request. Subsequently, in a November 21, 2011 email communication from counsel, Complainants advised that they wished to proceed to a decision in the matter.
4. Factual Background
Complainants are apparently related companies, affiliates of the Volvo Group, which is well-known throughout the world for its transportation-related products and services.
Complainant Prevost Car Inc. manufactures and sells buses, motor homes, and conversion coaches in Canada and the U.S. Its predecessor-in-interest, Les Ateliers Prévost, was founded by Eugène Prevost in 1924. Complainant Prevost Car Inc. has used the mark PREVOST for its passenger coaches, conversion coaches, and parts and service and has used “Prevost Car” in its company name since 1957.
Complainant Volvo Group Canada Inc. owns Canadian and U.S. federal trademark registrations for the mark PREVOST for buses and motor homes, as well as other marks that include the name “Prevost.” In 1997, Complainant Prevost Car Inc. registered and began using the domain name <prevostcar.com> to provide information about its products and services.
Since at least May 2000, the <prevost.com> domain name has been used to redirect visitors to the “www.philcooper.com” website operated by Phil Cooper Motorhomes, which sells PREVOST vehicles along with other brands. In 2004, Complainant Prevost Car Inc. consented to the use of the domain name by Phil Cooper Motorhomes. In October 2010, Respondent, who has been the technical and administrative contact for the domain name since at least 2001, became identified as the “registrant” for the domain name.
5. Parties’ Contentions2
A. Complainants
1. Identical or Confusingly Similar
Complainants are affiliated with the Volvo Group. Complainant Prevost Car Inc. has manufactured buses, motor homes, and coaches for many decades, offering its goods and services under the trademark PREVOST and other related marks.
Complainant Prevost Car Inc.’s affiliate, Complainant Volvo Group Canada Inc., owns Canadian and U.S. federal trademark registrations for the mark PREVOST for buses and motor homes, as well as registrations for other marks that include the name “Prevost.” The earliest U.S. registration for PREVOST (owned by Volvo Group Canada Inc.) issued in 1981, claiming a date of first use in 1924.
In 1997, Complainant Prevost Car Inc. registered and began using the domain name <prevostcar.com> to provide information about its products and services.
The <prevost.com> domain name is identical or confusingly similar to the PREVOST mark because it incorporates the mark in its entirety.
2. Rights or Legitimate Interests
Because Respondent registered the domain name long after one of the Complainants had established rights in the mark, the burden is on Respondent to establish rights or legitimate interests in the domain name.
Respondent cannot establish rights or legitimate interests in the domain name. There is no current relationship between the parties that gives Respondent any license, permission, or other right to use a domain name that includes the PREVOST mark; the permission granted by Complainant Prevost Car Inc. to Phil Cooper Motorhomes has been revoked and Respondent has never been granted such permission.
The domain name is not and could not be Respondent’s legitimate name or nickname.
Respondent is not using the domain name in connection with bona fide offerings of goods or services or making a legitimate noncommercial or fair use of the domain name. The fact that PREVOST brand products are offered through the website does not give Respondent any right or interest in the domain name.
Even if Respondent was acting as an agent of Phil Cooper Motorhomes, to whom Complainant Prevost Car Inc. had granted permission to use the domain name, that permission has been revoked.
3. Registered and Used in Bad Faith
Respondent was never given permission to use or register the domain name. Respondent registered and is using the domain name for commercial gain by attracting visitors to the “www.philcooper.com” website where products of Complainant’s competitors are offered, as well as to generate revenue from third party advertising, and drive traffic to another website where products of Complainants’ competitors are offered.
Even if Respondent’s 2010 registration is considered to be a continuation of the earlier registration by Phil Cooper Motorhomes, Respondent’s registration and use is in bad faith. Although Phil Cooper Motorhomes was granted permission to “use” the <prevost.com> domain name, it did not have permission to register the domain name prior to that time. The permission granted by Complainant Prevost Car Inc. did not transform the initial bad faith registration into a legitimate registration. Once permission was revoked, further use of the domain name was in bad faith.
The use of a disclaimer on the website only shows that Respondent knows that visitors will otherwise assume that the domain name is affiliated with Complainant Prevost Car Inc. Further, the disclaimer does not dispel the initial interest confusion.
B. Respondent
1. Late Filing of the Response
Respondent apologized for the late Response. Respondent is the daughter of Phil Cooper, who runs Phil Cooper Motor Homes, the beneficial owner of the domain name. The Coopers are legally unsophisticated parties who needed time to find counsel experienced in domain name disputes and finalize the engagement.
Further, because the domain name was registered thirteen years ago, it was difficult to locate certain documents needed to file a complete response, such as old email messages and records from Network Solutions, Inc., the original registrar of the domain name, and Respondent’s bank.
Respondent requests that the Panel consider the Response because it will not delay the decision, will not prejudice Complainants, and is in the interest of justice.
2. Identical or Confusingly Similar
Respondent concedes that the domain name is identical to a trademark in which Complainants have rights.
3. Rights or Legitimate Interests
Respondent registered the domain name in 1998 on behalf of her father’s business, Phil Cooper Motor Homes, and was identified as the Administrative Contact. Although the information in the WhoIs record recently changed to identify Respondent as the registrant, Phil Cooper Motor Homes is now, and has always been, the beneficial owner of the domain name. The practice of a domain name being held in the name of a third party who administers it on behalf of its beneficial owner is not uncommon. In fact, the <prevostcar.com> domain name referenced in the Complaint is held in the name of a third party rather than in the name of one of Complainants.
The fact that Ms. Cooper’s business, Phil Cooper Motor Homes, is the beneficial owner of the domain name is demonstrated by the fact that the domain name has always redirected to the “www.philcooper.com” website, regardless of the person or entity listed as the registrant.
Phil Cooper Motor Homes is a broker for used motor home and coach sales; the majority of vehicles sold are PREVOST vehicles; Phil Cooper Motor Homes has had a long-standing business relationship with Complainant Prevost Car Inc. since before the domain name was first registered in 1998.
Respondent registered the <prevost.com> domain name in 1998 on behalf of Phil Cooper Motor Homes to accurately advertise the types of vehicles that could be purchased through the business. Complainant Prevost Car Inc. was aware of the registration and use of the domain name beginning in 1998.
In 2004, when an attorney for Complainant Prevost Car Inc. contacted Ms. Cooper regarding the domain name, the request was to use a disclaimer, not to cease use or transfer the domain name. In January 2005, Complainant Prevost Car Inc. sent a “revocable” consent agreement to Ms. Cooper, which expressly accepted use of the domain name, provided that a disclaimer denying any affiliation with Prevost Car was used. Ms. Cooper did not agree to the document.
Periodically, Complainants requested that Mr. Cooper add disclaimers to the screen that the domain name linked to prior to redirecting visitors. Mr. Cooper cooperated in placing those disclaimers. Thus, Complainants knew about and consented to Mr. Cooper’s use of the domain name.
Before Respondent received any notice of the dispute, the domain name was used in connection with a bona fide offering of goods or services. Phil Cooper Motor Homes had been using the domain name in connection with the sale of used PREVOST vehicles for over thirteen years before notice of this dispute.
Complainant has a long history of working with Mr. Cooper in the placement of used PREVOST cars, as demonstrated by their email communications. Contrary to the claim that there is no relationship between Complainants and Phil Cooper Motor Homes, during the period the domain name has been registered, Complainants have worked with Mr. Cooper in assisting customers in selling used PREVOST vehicles, selling repossessed vehicles through Phil Cooper Motor Homes, and requesting that Mr. Cooper testify in court on its behalf. Complainants thus impliedly consented to use of the domain name during the first seven years after its registration; thereafter, Complainants expressly consented for the next six years. This consent is evidence of that Mr. Cooper had the right to use the domain name in connection with his business.
In any case, consent is not required. Panels have routinely held in favor of respondents where such respondents have been using the domain name in connection with the sale of genuine branded goods. As in those cases, Mr. Cooper sells almost exclusively PREVOST-branded vehicles through his website and has always accurately disclosed the fact that his site is not affiliated with Complainant Prevost Cars. Mr. Cooper has also not tried to “corner the market” in relevant domain names such that the trademark owner cannot reflect its own mark in a domain name — to the contrary, Complainant registered its <prevostcar.com> domain name a year prior to registration of the domain name.
4. Registered and Used in Bad Faith
The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants or their competitors for consideration in excess of Respondent’s out-of-pocket costs. Mr. Cooper has repeatedly refused to sell the domain name, despite receiving offers from multiple parties.
The domain name was not registered in order to prevent Complainants from reflecting the mark in a corresponding domain name. Complainants admit that they registered the <prevostcar.com> domain name before the domain name. Complainants could have registered <prevost.com> at that time and had ample opportunity to demand its transfer of the domain name during the first seven years of its registration -- before it expressly consented to Mr. Cooper’s use. There has also been no evidence that Ms. Cooper has engaged in a pattern of such conduct.
Mr. Cooper and Complainants are not competitors and the domain name was not registered primarily to disrupt Complainants’ business. In fact, Complainant has worked with Mr. Cooper on numerous occasions to assist customers in the sale or purchase of used PREVOST vehicles. Mr. Cooper’s sale of used PREVOST vehicles benefits Complainants by demonstrating to potential purchasers that a market exists for their vehicle once they decide to upgrade to a newer model.
The domain name was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to Respondent’s web site or other online location, by creating a likelihood of confusion with the PREVOST mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. In fact, Mr. Cooper has placed numerous disclaimers on the site at Complainants’ request over the years and instituted a delayed redirect to his website to allow users the chance to see that they are not going to Complainants’ website.
The claim that the mere use of the domain name itself creates “initial interest confusion” is no longer good law throughout the U.S. under Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010).3
Respondent strenuously disagrees with Complainants’ claim that the domain name was registered in bad faith and that it was used in bad faith before Complainants expressly granted consent and after they revoked that consent.
Mr. Cooper had a legitimate interest in using the domain name to promote the sale of genuine PREVOST vehicles. While he did not have express permission to register the domain name, no such permission was required, because he had a right, as a seller of authentic PREVOST-branded products, to describe the products in a domain name. Thus, registration of the domain name in connection with that bona fide offering of goods was in good faith. Likewise, use of the domain name has been in good faith. Mr. Cooper has never attempted to confuse users as to his affiliation with Complainant Prevost Car, Inc. To the contrary, he has added disclaimers to his site -- the first thing a visitor sees is a statement that the website is not affiliated with Prevost Car – and instituted a delay in the redirect. The website to which visitors are redirected does not use Complainants’ “stylization or logos.”
The argument that any use of the domain name without its express consent must be in bad faith is not supported by law or precedent.
The unilateral “revocable consent” agreement presented in 2005 not only lacks legal weight, it is irrelevant to Mr. Cooper’s rights to register and use the domain name and good faith intentions in doing so. The agreement and its “revocation” are without legal effect.
6. Discussion and Findings
A. Procedural Matters
1. Late Filing of Response
On September 27, 2011, the due date for the Response, Respondent requested an unspecified extension of time. Complainants objected, arguing primarily that any extension would be prejudicial to them and reward Respondent for her delay in retaining counsel.
As noted above, the Center denied the request; however, it forwarded the Response to the Panel for consideration in its discretion pursuant to the Rules, paragraph 10.
The Panel concludes that consideration of the late-filed Response is consistent with the spirit of the Policy. The deadline for submitting a Response is intended to balance the need to give a respondent a reasonable time in which to submit arguments and evidence against the need to resolve the matter expeditiously to avoid prejudicing the complainant. Rule 10(b) requires the Panel to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” while Rule 10(c) requires the Panel to “ensure that the administrative proceeding takes place with due expedition.” While it would have been preferable for Respondent to have requested the additional time sooner, the Panel concludes that under the factual circumstances of this case, Complainants have not been prejudiced. The Response was filed before the Panel was appointed and did not delay the proceedings. Accordingly, the Panel will consider the Response.
2. Multiple Complainants
The Complaint identifies three Complainants: Prevost Car Inc., Volvo Group Canada Inc., and Volvo Trucks Canada Inc. Complainant Volvo Group Canada Inc. owns the cited Canadian and U.S. federal trademark registrations for the PREVOST mark and Complainant Prevost Car Inc. uses the mark and uses the <prevostcar.com> domain name. The Complaint requests that the domain name be transferred to Complainant Prevost Car Inc.
Neither the Policy nor the Rules provide for multiple Complainants. However, the Panel shares the consensus view that a related company, such as a subsidiary or parent to the owner of a trademark may be considered to have rights in the trademark for purposes of a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) Question 1.8. The Panel is of the view that evidence of such rights is preferable,4 however, where, as here, a complaint is brought by the relevant parties as co-complainants, the existence of such rights is evident. The Complaint makes clear that Prevost Car Inc. uses the PREVOST mark, while the registrations for the mark are owned by its related company, Volvo Group Canada Inc. However, the Panel notes that the Complaint does not articulate what rights Volvo Trucks Canada Inc. currently holds in the PREVOST mark. Accordingly, the Panel accepts the designation of only Prevost Car Inc. and Volvo Group Canada Inc. as Complainants.
B. Substantive Matters
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
1. Identical or Confusingly Similar
Complainants have established its rights in the mark PREVOST by virtue of the evidence of the U.S. federal trademark registration and Canadian trademark registrations. Respondent concedes that Complainants have established rights in the mark and that the mark is, for purposes of these proceedings, identical to the domain name.
The Panel finds that the domain name is confusingly similar to a mark in which Complainants have rights.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
The Panel finds that Complainants have made a prima facie showing as to the examples set out in paragraph 4(c)(ii) and (iii) of the Policy: It does not appear that Respondent, her father, or his company5 is commonly known by the domain name -- Respondent is an individual named Lori Cooper and the company is Phil Cooper Motor Homes operated by Phil Cooper. Nor does it appear that use of the domain name is noncommercial or otherwise a fair use.
The Panel finds that Complainants have not made a prima facie showing as to the example set out in paragraph 4(c)(i) of the Policy. Complainants acknowledge that, at least as of 2004, Prevost Car Inc. expressly granted to Phil Cooper Motor Homes the right to “continue its use” of the <prevost.com> domain name. Complainant’s argument hinges on its assertion that that consent agreement was “revocable” and that it has been effectively revoked.
Complainants attached a copy of the consent “agreement” to the Complaint.6 Complainant provides no evidence that Respondent, Phil Cooper Motor Homes, or Phil Cooper agreed to its terms. The specific terms include the “condition” that the Phil Cooper Motor Homes’ website continue to disclaim any affiliation with Prevost Car Inc. and the characterization of the consent as “revocable.”
In the Panel’s view, while the unsigned document provided by Complainants evidences its consent in 2004 to the registration and use of the domain name, it does not establish that the consent was revocable, much less unilaterally revocable. Further, under the circumstances of this case, which include over a decade of use of the domain name in connection with sales of legitimate PREVOST-branded vehicles, the Panel views the question of the parties’ contractual rights and obligations, if any, relating to the consent “agreement”, to be well beyond the scope of these proceedings.
Further, the Panel shares the consensus view that there are circumstances where a reseller or distributor may make a bona fide offering of goods and services and thus acquire a legitimate interest in the domain name. See WIPO Overview 2.0, Question 2.3. Those circumstances generally include: (1) actually offering the goods and services at issue, (2) using the site to sell only the trademarked goods, and (3) the site’s accurately disclosing or disclaiming the registrant’s relationship with the trademark owner. Here, Phil Cooper Homes does not use the site to sell PREVOST vehicles exclusively. However, the evidence suggests that the site is used primarily to sell PREVOST vehicles and that that use has for many years been with Complainants’ express consent. Under the particular circumstances of this case, the Panel would find that even if Complainants’ had made a prima facie showing as to paragraph 4(c)(i) of the Policy, that that showing had been rebutted.
Thus, Panel finds that Complainants have not established the second element under the Policy.
3. Registered and Used in Bad Faith
As noted above, a complainant must establish each of the three elements outlined in Paragraph 4(a) of the Policy in order to prevail. In light of the conclusion that Complainants have not established the second element, it is not necessary to address the issue of bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Sole Panelist
Dated: November 22, 2011
1 On August 31, 2011, Respondent sent an email inquiry to the Center asking when the Response was due. In an email reply sent the same day, the Center advised that once it had verified that the Complaint satisfied the formalities of the Policy, paragraph 4(a), Respondent would be notified and would have 20 days in which to respond.
2 Both the Complaint and the Response use the singular term “Complainant” without specifying which Complainant is referred to. The Panel views these references to be to both Complainants and uses the plural term.
3 While acknowledging that the court’s decision is not “WIPO precedent”, Respondent points out that it is legal precedent in the country where the Coopers are residents and Complainant does business, and evidences the Coopers’ reasonable belief that registration and use of the domain name was and is permissible.
4 This is because the Panel also shares the view that, as a general rule, in order for the filing of a single complaint brought by multiple complainants to be accepted, the complaint should be accompanied by a request for consolidation that establishes that the relevant criteria have been met. See WIPO Overview 2.0, Question 4.16.
5 The Panel is persuaded that despite the fact that Ms. Cooper is now identified as the “registrant” of the domain name, Mr. Cooper’s business Phil Cooper Motor Homes is responsible for and the beneficial holder of the registration. The annexes to the Complaint show that, according to the WhoIs records, Respondent was listed in the as the administrative contact for the domain name in 2000 (shortly after it was registered), 2003, and 2005, as the administrative and technical contact in 2008, 2009, 2010, and as the actual registrant for the domain name by October 2010. Throughout that time, the domain name was used in the same fashion -- to redirect visitors to the “www.philcooper.com” website operated by Phil Cooper Motor Homes.
6 The copy attached to the Complaint is not signed by either party despite the fact that it contains a space for signature on behalf of Phil Cooper Motor Homes indicating its “acceptance” of the agreement.