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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Handler, Metro Concourse Limited

Case No. D2014-1752

1. The Parties

The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America (“US”).

The Respondent is Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Queensland, Australia / Domain Handler, Metro Concourse Limited of Road Town, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <volvoequipment.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 20, 2014.

The Center verified that the Complaint together with the amended 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 amended Complaint, and the proceedings commenced on October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2014.

The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on November 18, 2014. 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 Volvo Trademark Holding AB is a corporation organized and existing under the laws of Sweden, and owns the VOLVO trademark throughout the world and licenses this trademark to AB Volvo and Volvo Corporation. AB Volvo and Volvo Car Corporation each own fifty per cent (50%) of Volvo Trademark Holding AB and the term “Complainant” refers to all of them collectively. The history of the group goes back to the year 1915, and in the year 1927 construction of VOLVO car began.

The VOLVO mark alone, and in combination with other terms is registered extensively throughout the world. As an example there are 18 live United States trademark registrations for the VOLVO mark alone to cover several goods and services, as registration in class 7 to cover constructions tools and other goods of the class.

The Domain Name was registered on July 5, 2007 and resolves to a parking page with sponsored links related to construction equipment.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the VOLVO trademark worldwide according to evidence provided in the exhibits of the Complaint. The Complainant states that VOLVO is a famous mark and shows several cases in support of this assertion.

The Complainant operates a website at “www.volvo.com”, where products consisting in VOLVO construction equipment are listed. The “Construction Equipment” is a separate category of VOLVO products listed on the website, and the Complainant has sold the VOLVO branded equipment for several years.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of the VOLVO trademark worldwide. A list of the trademarks owned by the Complainant in the United States is provided in Exhibit A to the Complaint, including registration number 3,202,372 in class 7. Exhibit C to the Complaint shows the Australian registrations, Exhibit E to the Complaint the list of Community Trademarks at the Office for Harmonization in the Internal Market (OHIM) and Exhibit D to the Complaint provides a list of the VOLVO trademark international registrations.

The Complainant operates a website at “www.volvo.com”, where products consisting in VOLVO construction equipment are listed. The “Construction Equipment” is a separate category of VOLVO products listed on the website, and the Complainant has sold the VOLVO branded equipment for several years. This fact shows that the Complainant has used the trade name “Volvo Construction Equipment” for years. Also, the company of the group of the Complainant named Volvo Equipment AB owns several domain names, similar to the Domain Name, as <volvoconstructionequipment.net> and <volvoconstructionequipment.com>.

The words “construction” and “equipment” are then part of the business of the VOLVO trademark and are also used by the Complainant as part of a trade name and in connection with goods and services that they offer. VOLVO is a well-known trademark and the word “equipment”, a generic word, included in the Domain Name, is not sufficient to avoid confusion, considering in addition that such word is also used by the Complainant as explained above. Therefore, the Domain Name is confusingly similar to the Complainant’s VOLVO trademark.

In summary, the Panel finds that the Domain Name is confusingly similar to the mark owned by the Complainant. Accordingly, the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has shown ownership of the famous VOLVO trademark, and use of the words “construction” and “equipment” and the existence of products and services provided by it using the combination VOLVO and “equipment”.

The Complainant has not granted any license or authorization to the Respondent to use the VOLVO trademark, and in view of the fame of the VOLVO trademark, it is not possible for the Respondent not to be aware of the existence of the VOLVO trademark of the Complainant. The Respondent is not known by the name “Volvo construction equipment”.

In the Panel’s view, the allegations made by the Complainant in the Complaint constitute prima face evidence that the Respondent does not have rights or legitimate interests in the Domain Name. The Respondent did not file any response and did not seek to demonstrate any rights or legitimate interests in the Domain Name.

In view of the above, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Complainant has therefore satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided arguments and evidence that demonstrate that the Domain Name has been registered and is being used in bad faith. In particular, the Domain Name is used as a pay-per-click page to divert public and attract the Internet users to products of competitors of the Complainant by creating a likelihood of confusion with the Complainant’s trademark, as shown in Exhibits J and K to the Complaint.

Given the fame of the VOLVO trademark and its use in construction equipment, the activities and business of the Complainant, and the fact that the Respondent is using the Domain Name to divert public to the Complainant’s competitors, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith. Therefore, the Panel finds that the Complainant satisfied the third element of the Policy.

7. Decision

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 name <volvoequipment.com> be transferred to the Complainant.

Gabriela Paiva Hantke
Sole Panelist
Date: November 27, 2014

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