WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Volvo India India, Volvo India
Case No. D2019-2170
1. The Parties
The Complainant is Volvo Trademark Holding AB, Sweden, represented by Anand & Anand, India.
The Respondent is Volvo India India, Volvo India, India.
2. The Domain Name and Registrar
The disputed domain name <volvoindiabus.com> is registered with Net 4 India Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2019, 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 sent an email communication to the Complainant on September 12, 2019 regarding a Complaint deficiency, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on September 13, and 17, 2019.
The Center verified that the Complaint together with the amended Complaints 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 September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on October 28, 2019. 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 in the business of licensing its trademarks to affiliate companies who manufacture and sell automobiles and other motor vehicles around the world. It owns the trademark VOLVO, which is a coined term in use since 1915. The mark is the subject of numerous trademark registrations in various countries, including Indian Trademark Reg. No. 308314, issued on September 10, 1975. Since 2001, the Complainant’s affiliates have sold buses in India using the VOLVO mark.
The Respondent registered the disputed domain name on April 29, 2011. At certain points in the past – though not as of the time of the filing of the Complaint – the Respondent used the disputed domain name to publish a website purporting to offer bus ticket booking services.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark VOLVO. The mark is associated with one of the most recognizable automobile brands in the world, having been in widespread use for many years since 1915. The disputed domain name is confusingly similar to this mark. It contains the mark in its entirety, accompanied only by the terms “India” and “bus” – which pertain to the services purportedly offered at the website associated with the disputed domain name. This additional material (along with the generic Top-Level Domain “.com”) does not prevent the confusing similarity for purposes of the Policy.
B. Rights or Legitimate Interests
The Complainant has successfully established a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The use of the disputed domain name to set up a website for bus-related services that could be mistaken for services offered by the Complainant is not a bona fide or noncommercial offering of services. The Complainant never licensed or otherwise authorized the Respondent to use the VOLVO mark within the disputed domain name.
The Respondent did not provide a response in this action, and nothing in the record serves to rebut the prima facie showing that the Complainant has made. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy provides that bad faith registration and use of a disputed domain name may be shown when a respondent uses a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of a product or service on that web site. Given how well known the VOLVO mark is, and was at the time the disputed domain name was registered, it is not plausible to conclude that the Respondent was unaware of the mark and its strength. The Panel finds that in this case, the registration and use of the mark within a disputed domain name and on a website that promoted bus-related services – clearly similar and overlapping to the products that the Complainant provides – was done in bad faith. The subsequent passive holding of the disputed domain name does not, in the circumstances of this case, prevent a finding of bad faith.
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 <volvoindiabus.com> be transferred to the Complainant.
Evan D. Brown
Date: November 11, 2019