WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Zhang Xinyu
Case No. D2008-0261
1. The Parties
Complainant is Volvo Trademark Holding AB, Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
Respondent is Zhang Xinyu, Xinyu Inc., Beijing, China.
2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2008. On February 21, 2008, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the domain name at issue. On February 22, 2008 CSL Computer Service Langenbach GmbH dba J transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 4, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on March 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 26, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on April 4, 2008. 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
Complainant is Volvo Trademark Holding AB, a corporation organized and existing under the laws of Sweden with a principal place of business in Sweden. Complainant owns the VOLVO trademark throughout the world and licenses this trademark to AB Volvo and Volvo Car Corporation for use in connection with their respective business. Complainant’s predecessor was founded in 1915 as a subsidiary of AB SKF, a Swedish ballbearing manufacturer and in 1927, construction of VOLVO cars began. In 1935, AB Volvo was listed on the Stockholm Stock Exchange. Complainant’s predecessors in interest and licensees have been selling cars, trucks, buses, construction equipment, components for airplane and rocket engines and many other goods and services under the VOLVO trademark throughout the world for many decades, beginning in the 1920s. The VOLVO trademark, alone and in combination with many other terms and designs, is registered extensively as a trademark and service mark in the United States and elsewhere throughout the world.
Many previous UDRP decisions have found that Complainant’s VOLVO trademark to be famous and Complainant was successful in having the disputed domain names transferred to it.
Respondent registered the domain name on December 6, 2007.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark VOLVO. The component “ca” has no source identifying meaning and is not used in a source identifying manner in connection with the disputed domain name.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
Respondent did not have any permission or authorization to use VOLVO as part of a domain name or in any other way.
1. Respondent is not making legitimate non-commercial or fair use of the domain name “without intent for commercial gain.” The disputed domain name resolves to a website for the domain name where a penis enlargement supplement is advertised and this is evidence of Respondent’s lack of legitimate rights.
2. Respondent is not using the domain name in connection with a bona fide offering of goods or services as there is no conceivable bona fide use of VOLVO trademark in a domain name which resolves to a website offering herbal supplements for penis enlargement.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered in bad faith for the following reasons:
1. Respondent chose the disputed domain name with full knowledge of Complainant’s rights and given the fame of the VOLVO trademark, it is inconceivable that Respondent was unaware of Complainant’s existence and its mark.
2. There is no reason for Respondent to use Complainant’s mark in its domain name other than to try to sell it to Complainant and prevent Complainant from registering the said domain name or for other commercial gain.
3. There is no reason for Respondent to use VOLVO trademark except to attract consumers to its website to generate offers for the domain name or to generate income from the sale of goods/services and Respondent purposely registered the disputed domain name for commercial gain.
4. The registration of the disputed domain name is an infringement of third party intellectual property rights and this is further evidence of Respondent’s bad faith registration.
B. Respondent
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. the respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the VOLVO mark in many countries throughout the world.
In assessing the degree of similarity between Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products and services.
The disputed domain name comprises (a) an exact reproduction of the Complainant’s VOLVO mark with an addition of the component “ca” in front and (b) the top level domain suffix ‘.com’. The word “volvo” is the dominant and the distinctive element of Complainant’s mark and it has been reproduced in its entirety in the disputed domain name. The Panel accepts Complainant’s contention that the addition of the component “ca” which has no source identifying meaning does not serve to distinguish the disputed domain name from Complainant’s VOLVO trademark and does not prevent the disputed domain name from being considered as confusingly similar to Complainant’s distinctive and well known VOLVO trademark.
Bearing in mind the following factors, in particular (a) the widespread reputation of Complainant’s trademark; (b) the distinctive character of Complainant’s VOLVO mark; (c) the dominant component of the disputed domain name; and (d) the visual, aural and similarities between the VOLVO trademark and the domain name at issue, the Panel therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests to the disputed domain name.
The Panel finds that the following circumstances are indicative of Respondent’s lack of rights or legitimate interests in the disputed domain name:
(i) The Complainant’s trademark VOLVO is a highly distinctive word with no descriptive significance to the goods or services sold under it. Therefore, Respondent could not be taken to be using the mark VOLVO in a descriptive sense.
(ii) Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “volvo” in its business operations or domain name;
(iii) Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and
(iv) The VOLVO mark is highly distinctive of Complainant and it is a famous mark in the automobile industry throughout the world. Consequently, it is not one that traders would legitimately choose unless the purpose is to create an impression of an association with Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [respondent] of the dispute, your 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent has not participated to this proceeding and has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that Respondent is unable to show cause that he has rights or legitimate interests to the said domain name.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
The circumstances referred to in paragraph 4(b) of the Policy are not exhaustive and other factors can also be considered in the totality of evidence to find bad faith within paragraph 4(b) of the Policy.
In the present case, the Panel finds that Complainant and its mark VOLVO enjoy a worldwide reputation in the automobile industry. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the VOLVO mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services.
The Panel also accepts Complainant’s contention that it is evident from the fact that the disputed domain name is presently linked to another website displaying pornographic material that Respondent is not using the disputed domain name in a bona fide offering of goods or services on the Internet. This finding coupled with the fact that Respondent did not participate in the present proceeding and did not adduce evidence to show that he has rights or legitimate interests in the disputed domain name lead the Panel to conclude that Respondent has registered the disputed domain name for less than honorable intentions.
Given the fame of Complainant’s VOLVO mark, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s widely known and distinctive marks, intended to ride on the goodwill of Complainant’s marks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of initial confusion with Complainant’s VOLVO trademark and this constitutes a misrepresentation to the public that its website is in one way or the other associated or connected with Complainant when in fact it is not true.
In the absence of evidence and rebuttal from Respondent, the Panel finds that the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: April 18, 2008
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