WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. "-"
Case No. D2016-0670
1. The Parties
The Complainant is Volvo Trademark Holding AB of Gothenburg, Sweden, represented by Wallberg IP Advice, Denmark.
The Respondent is "-" of the United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <volvoways.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2016.
The Center appointed Karen Fong, The Hon Neil Brown Q.C., and W. Scott Blackmer as panelists in this matter on May 26, 2016. The Panel finds that it was properly constituted. Each member of 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, an entity within the Volvo group of companies (the "Volvo Group") is the owner of the VOLVO trade marks (the "Trade Mark") throughout the world which it licenses to other entities in the Volvo Group for use with their various businesses. The Trade Mark has been used extensively for more than 80 years on a wide variety of products and services such as cars, trucks, buses, construction equipment, marine engines and industrial power systems. By reason of such use, it has acquired a global reputation for products and services of high quality and safety. The Trade Mark has been recognized in several UDRP decisions as a well-known trade mark.
Various entities within the Volvo Group hold registrations for and use a large number of domain names incorporating the Trade Mark, the websites being "www.volvo.com", "www.volvogroup.com", "www.volvocars.com" and "www.volvotrucks.com".
The Volvo Group has set out values for the group which it calls "The Volvo Way". This has been widely communicated both internally and externally.
The Respondent registered the Domain Name on October 31, 2013. Aside from the registrant email address and country, there are no other details for the Respondent. The website connected to the Domain Name (the "Website") allows for visitors to download an unauthorized copy of propriety software belonging to the Volvo Group called Premium Tech Tool ("PTT"). The Website formerly linked to another website which hosts the copy of PTT. The home page of the Website contained photographs of VOLVO vehicles, the copyright of which belong to the Volvo Group. The Website is not currently active. It contains a message that the error on the site is being corrected.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Trade Mark through long and extensive use is a well-known trade mark and the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The Domain Name comprises the Trade Mark in its entirety, the descriptive word "way" and the generic ".com" domain suffix. The addition of a descriptive term which renders the Domain Name identical to the name of the values concept of the Volvo Group, "The Volvo Way", does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
The Respondent has not received any license or authorization from the Complainant to register and use a domain name that incorporates the Trade Mark. A forensic analysis has been done on the PTT software available on the Website and it has been confirmed that it is identical to the Volvo Group's genuine PTT software. The Respondent has also not received any license or authorization that it can copy or distribute PTT software, the copyright of which belongs to the Volvo Group. Just as there can be no legitimate interest in the offering for sale of counterfeit products, there can be no legitimate interest in the offering for downloading pirated software although it is not entirely clear how this is being monetized on the Website.
In any event, as the Complainant has also rightly submitted such use of the Website fall outside the Oki Data principles as there has been no actual offering of genuine goods or service bearing the Trade Mark. Further the Website does not disclose the relationship between the Respondent and the owner of the Trade Mark. In fact the notification on the Website that "Volvo is the registered trademark" suggests that the Trade Mark is owned by the Respondent.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name. The very incorporation of the Complainant's well known Trade Mark and the use of the Complainant's group values name, "The Volvo Way" is clear evidence of such knowledge. Further, the content of the Website, which displayed the Complainant's Trade Mark and copyright materials, especially the offer of pirated software belonging to the Volvo Group, clearly demonstrates great knowledge of the Complainant and its activities.
The Respondent did not provide proper contact details when it registered the Domain Name. There is no registrant name or address. The only information is the registrant country and email address. The deliberate use of fictitious and/or ineffective contact particulars is further evidence of bad faith. (Farouk Systems Inc. v. David, WIPO Case No. D2009-1245). Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The content of the Website as outlined above, especially the offer of pirated PTT software shows that the Respondent set up the Website to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The current passive holding of the Domain Name does not prevent a finding of bad faith use in these circumstances.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <volvoways.com> be transferred to the Complainant.
The Hon Neil Brown Q.C.
W. Scott Blackmer
Date: June 15, 2016