WIPO Domain Name Decision D2002-0521 for volvovehicles.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Nicklas Uvelov

Case No. D2002-0521

 

1. The Parties

The Complainant in this administrative proceeding is Volvo Trademark Holding AB ("Complainant"), a corporation organized and existing under the laws of Sweden, with its main business address at c/o AB Volvo, VHK, dept. 641, SE-405 08 Göteborg, Sweden.

The Respondent in this administrative proceeding is Nicklas Uvelov("Respondent"), an individual with an address at Magistratsvägen 57F 28, Lund SE-226 44, Sweden.

 

2. The Domain Names and Registrar

The domain name at issue is ("Domain Name") and the Registrar is Network Solution Inc, 505 Huntmar Drive, Hendon, Virginia VA20170, United States of America.

 

3. Procedural History

A Complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on June 5, 2002, and subsequently in hardcopy on June 7, 2002. The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on June 7, 2002.

On June 6, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed on June 11, 2002, in its Verification Response that the disputed Domain Name was registered with Network Solutions Inc. and that Respondent was the current registrant of the disputed Domain Name.

A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on June 12, 2002, setting a deadline of July 2, 2002, by which the Respondent could file a Response to the Complaint.

Having received no response from Respondent, the Center issued on July 4, 2002, a Notification of Respondent Default. This Notification was sent to respondent by e-mail. The Notification was copied to Complainant.

The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.

The Complainant has requested that the dispute should be decided by a single-member Panel. The Center invited Anders Janson to serve as Sole Panelist and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence, which was duly signed and returned to the WIPO Center on July 12, 2002.

The WIPO Center transmitted to the parties on July 12, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date as of July 26, 2002. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

The Administrative Panel has issued its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, but without the benefit of a Response from the Respondent

 

4. Factual Background

The Complainant is a corporation, which handles the trademark affairs of AB Volvo, and Volvo Car Corporation throughout the world. AB Volvo and Volvo Car Corporation each own 50% of Complainant (the Panel agrees with Complainant in using the term "Complainant" in this administrative proceeding to refer to the actual Complainant (Volvo Trademark Holding AB) and collectively to AB Volvo and Volvo Car Corporation, on behalf of which Volvo Trademark Holding AB owns the trademarks.)

Complainant has been selling cars, trucks, buses, construction equipment, components for airplane, rocket engines and many other goods and services under the VOLVO trademark throughout the world for many decades, beginning in the 1920s. The mark VOLVO, alone and in combination with other terms and designs, is registered extensively as a trademark and service mark worldwide.

In the United States, there are 18 live trademark registrations for the VOLVO mark for a variety of goods and services. The VOLVO mark is registered and used extensively as a trademark and service mark in the United States, in the European union, in Sweden and throughout the world.

Respondent, Nicklas Uvelov, is an individual who when he registered the disputed Domain Name provided the registrar with a contact address in Sweden. The Respondent is in default and accordingly has not challenged the conclusions of the Complainant.

The disputed Domain Name was registered by the Respondent with Network Solution Inc on January 29, 1999.

The disputed Domain Name has not been operational for a long period. The website only says "site down due to server problems" and furthermore "Please note that this domain or site has nothing to do with the owners of or .".

 

5. Parties� Contentions

A. Complainant

Complainant contends that:

- the Domain Name is identical and confusingly to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name was registered and is being used in bad faith; and

- the Domain Name should be transferred to the Complainant.

B. Respondent

Respondent who has, according to the documentation available in the case, been communicated the Complaint and the Notification of Respondent Default, has not submitted any response and is in Default.

 

6. Discussion and Findings

Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:

"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith."

Identical or Confusingly Similar Domain Name: Policy 4(a)(i)

The Domain Name at issue is . Complainant is the holder of the registered trademark VOLVO. As stated in the Complaint and upheld in Volvo Trademark AB v. Cup International Limited, WIPO Case No. D2000-0338; Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. DNU2001-0001; and Volvo Trademark Holding AB v. , WIPO Case No. D2001-0723; and Volvo Trademark Holding AB v. e-motordealers Ltd WIPO Case No. D2002-0036, the mark VOLVO is to be considered as a "famous mark" on the basis of its worldwide reputation in connection with the sale of automobiles and other vehicles. By incorporating the Complainant's mark with the generic term "vehicles" - the Complainant's main line of products (cars, trucks buses and other vehicles) which the Complainant mark VOLVO is considered closely connected to - at the end of the Domain Name, the likelihood of confusion cannot be considered diminished but rather aggravated.

When trying to access the website assigned to the disputed Domain Name the Panel has only received DNS-error messages. Complainant has however attached a printout of the web-site dated May 29, 2002, as exhibit F in the Complaint. The printout of web-site consists of a text message stating "site down due to server problems" and furthermore "Please note that this domain or site has nothing to do with the owners of or .". Irrespective of the fact that the web-site connected to the disputed Domain Name at one point or another has consisted of a short disclaimer does not diminish the likelihood of confusion between the famous mark and the disputed Domain Name which actually contains the identical mark. [As upheld in E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615, the fact that the actual site contained a disclaimer that the site were not affiliated with the mark of the complainant did not alter the Panel finding both identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.]

The Panel agrees with the Complainant that by virtue of the long and extensive use, the VOLVO mark has become famous, and is a well-known trademark all over the world and is especially known in Sweden, the country of origin of the Complainant. The Panel therefore holds that the Complainant has established element (i) of the Policy's paragraph 4(a).

Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)

As mentioned above in section 3, the Respondent has not filed a Response in accordance with the Rules, Paragraph 5. In those circumstances when Respondent clearly has no obvious connection with the disputed Domain Name, and indeed when the Domain Name has not been actively used, the mere assertion from Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exist. Respondent has not submitted any response. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) in the Policy. In conclusion the Respondent has not presented any evidence of rights or legitimate interest in using the disputed Domain Name.

The Panel therefore holds that the Complainant has established element (ii) of the Policy's paragraph 4(a).

Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)

Finally the Panel has to consider the question of the disputed Domain Name having been registered and used in "bad faith".

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name. Although the Complainant argues that those circumstances in different ways are fulfilled it is the view of the Panel that the examples provided in paragraph 4(b) is not applicable in this particular case. It is however a well known, and in numerous cases upheld, fact that the circumstances stated in paragraph 4(b) is not to be considered exclusive but merely a guidance when considering if a domain name has been registered and used in bad faith or not.

There is no question that the trade name VOLVO is extremely well known, especially in Sweden where the Respondent, seems to be living according to the contact information provided by himself. It is therefore simply impossible that the Respondent could have registered the domain name without being aware of the Complainant. The Panel considers that this is sufficient in itself to prove that the Respondent was fully aware of the existence and significant reputation of Complainant at the time of registration.

It is the Panel�s opinion that only because a domain name contains a well known trade name, even as well known as the trade name in question, it is not necessarily used in bad faith. It is quite possible that a registrant has a plausible and acceptable reason or use for the domain name that does not constitute bad faith. In this particular case however the Respondent, as far as the Panel knows, has not used the domain in any way but rather let it be dormant. As to its use in bad faith, it is becoming an established principle of this procedure under the UDRP that merely holding an infringing domain without use, can constitute use in bad faith.

Furthermore the Respondent is in Default and has thus not presented any reasons or evidence or arguments of a legitimate interest in using the disputed Domain Name. It is not possible to conceive an obvious reason in which the Respondent could legitimately use the domain name.

It is the Panels view that under these particular circumstances, the facts provided by the Complainant is sufficient to shift the burden of proof to Respondent.

As already stated the Respondent is in Default and has provided no evidence or reasons what so ever to use the disputed Domain. Furthermore the Respondent has not actively used the Disputed Domain name but merely left it dormant.

The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant paragraph 4(a)(iii) of the Policy.

 

7. Decision

In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical and confusingly similar to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.

Consequently the Panel decides that the Domain Name shall be transferred to the Complainant.

 

 

Anders Janson
Sole Panelist

Dated July 25,2002

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