WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Pankaj Dobhal, A1 Tours & Travels
Case No. D2012-0421
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 Pankaj Dobhal, A1 Tours & Travels of New Delhi, India.
2. The Domain Names and Registrars
The disputed domain names <volvobusesindia.com> and <volvotickets.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com and Tucows Inc., respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2012. On March 2, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com and Tucows Inc. a request for registrar verification in connection with the disputed domain names. On March 2, 2012, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 5, 2012, OnlineNic, Inc. d/b/a China-Channel.com 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 March 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.
The Center appointed Alfred Meijboom as the sole panelist in this matter on May 1, 2012. 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
The Complainant is the owner of many VOLVO trademarks worldwide, including India, registered for many different goods and services, including land vehicles and transportation related services (the “VOLVO trademarks”).
The disputed domain name <volvobusesindia.com> was registered on May 5, 2006, and the disputed domain name <vovlvotickets.com> was registered on March 25, 2011. According to the WhoIs information of the disputed domain names, the listed registrants of both disputed domain names mention Pankaj Dobhal as the technical and contact person and they have the same physical address.
5. Parties’ Contentions
The Complainant is holder of the VOLVO trademarks which were registered extensively as trademarks and service marks throughout the world. The Complainant handles the trademark affairs of AB Volvo and Volvo Car Corporation throughout the world. AB Volvo and Volvo Car Corporation each own 50% of VOLVO trademark Holding AB. The Complainant’s predecessors in interest have been selling motor vehicles and other products under the VOLVO trademarks throughout the world for many years beginning in the 1920’s. In 1934, Volvo expanded its manufacturing to include bus chassis production and marine engine production.
The Complainant contends that, by virtue of Complainant’s long and extensive use of the VOLVO trademarks, such VOLVO trademarks have become famous, as recognized by many panels in UDRP cases.
The Complainant asserts that the Respondents are actually one and the same entity. Exhibits H and I to the Complaint show printouts of the websites under the disputed domain names, which show that both websites are maintained by Respondent A1 Tours & Travels. Furthermore, Exhibits J and K show printouts of the ‘about us’ section of the websites under the disputed domain names, which mention the same address and banking details. Moreover, according to the WhoIs information, the physical addresses of the registrants of the disputed domain names are identical. Therefore, both entities are to be assumed one and the same.
The Complainant argues that the disputed domain names are confusingly similar to the VOLVO trademarks. The “volvo” component of the disputed domain names is identical to the VOLVO trademarks, which establishes confusing similarity. With respect to the disputed domain name <volvobusesindia.com>, the Complainant adds that, by incorporating the generic term “buses”, which is considered to be one of the Complainant’s main line of products, the likelihood of confusion is not diminished but rather aggravated. The Complainant further states that adding “india” to “volvobuses” does not lessen confusion of the disputed domain name <volvobusesindia.com> with the Complainant’s famous VOLVO trademarks (cf. Donald J. Trump V. Web-adviso, WIPO Case No. D2010-2220). Similarly, “tickets” in the disputed domain name <volvotickets.com> is also descriptive or generic.
The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain names. The Respondent cannot conceivably claim to have been unaware of the famous VOLVO trademarks, or the fact that they are owned by Volvo. Nor can the Respondent deny that it did not have permission or authorization or license to use “Volvo” as part of the disputed domain names or in any other way. Therefore, the Respondent is not making legitimate or fair use of the disputed domain names.
Furthermore the Complainant contends that the Respondent registered the disputed domain names in bad faith. The Respondent chose the disputed domain names with full knowledge of the Complainant’s right therein. The Complainant contends that the Respondent purposely registered the disputed domain names for commercial gain. The Complainant claims that the Respondent is using the disputed domain names to attract Internet users and to sell travel-related services which are unauthorized by the Complainant and unrelated to the Complainant’s goods and service offered under the VOLVO trademarks. Therefore, the Complainant believes that the Respondent uses the disputed domain names in bad faith.
Accordingly the Complainant asks the Panel to order the Respondent that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Identity of the Respondent
Although the Rules provide that a Complaint may relate to more than one domain name as long as the domain names are registered by the same domain name holder, in a situation where it is clear that the same entity registered domain names using different names, it is appropriate to proceed in a single Complaint against multiple registrant names (e.g., Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057; Yahoo! Inc. and GeoCities v. Eitan Zviely a/k/a comyahoo.com, et al., NAF Claim No. FA0306000162060).
The Panel is satisfied that the evidence submitted by the Complainant in this case shows that the listed registrants of the disputed domain names are one and the same. As shown by the WhoIs information, both listed registrants have the same physical address and the administrative technical contact of the listed registrant of the disputed domain name <volvotickets.com> is the individual who registered the disputed domain name <volvobusesindia.com>, who – according to the WhoIs information – uses the email address “email@example.com” as contact e-mail address, which clearly corresponds to the disputed domain name <volvobusesindia.com>. Further, the websites under the disputed domain names both mention that they are maintained by the listed registrant of the disputed domain name <volvobusesindia.com> and both include the same bank details. Further, the website under the disputed domain name <volvobusesindia.com> contains a link to the website under the other disputed domain name.
The fact that the Respondent has not replied to the Complainant’s allegation that the listed registrants of the disputed domain names are actually the same entity is also an indication that such allegation is true.
The Panel shall therefore consider the listed registrants of the disputed domain names as one and the same, and it shall therefore use “Respondent” in the singular form in this decision.
Assessment of the case
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the majority view of panelists is that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
C. the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant’s trademarks. The disputed domain names reproduce the VOLVO trademarks in their entirety. It is consistently decided that adding a generic term – in this case “buses India” and “tickets”, respectively – to an established mark does not affect the finding that a domain name is confusingly similar (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguras y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942). Furthermore, the addition of the suffix “.com” is non-distinctive because it is required for the registration of a domain name.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s VOLVO trademarks, and the first element is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that it did not authorize the use of the VOLVO trademarks to the Respondent. Furthermore, the Panel is satisfied that there is no indication that the Respondent has been commonly known by the disputed domain names or that it has used the disputed domain names for a bona fide offering of goods or services.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made a prima facie case. As a result, the Panel is satisfied the Respondent has no rights or legitimate interests in the disputed domain names. Therefore, the second element of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is satisfied that the VOLVO trademarks is distinctive and famous, so it is likely that the Respondent was aware of the Complainant’s rights and interests in the VOLVO trademarks when the Respondent registered the disputed domain names.
Further, the Respondent’s use of the disputed domain names was clearly to attract Internet users to its websites under the disputed domain names for its own commercial gain. In addition, failure of the Respondent in this case to respond to the Complaint supports an inference of bad faith.
Therefore, the Panel finds that the disputed domain names were registered and used in bad faith, so that the third element is also met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <volvobusesindia.com> and <volvotickets.com> be transferred to the Complainant.
Dated: May 11, 2012