WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Volvo Trademark Holding AB v. Visual Enginering, S.L. Case No. D2008-1409 1. The Parties
The Complainant is Volvo Trademark Holding AB, Gothenburg, Sweden, represented by Valea AB, Sweden.
The Respondent is Visual Enginering, S.L., Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2008. On September 17, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 17, 2008, eNom 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 verified that 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2008.
The Center appointed Dietrich Beier as the sole panelist in this matter on October 29, 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
The Complainant owns the VOLVO trademark through out the world and licenses this trademark to VOLVO Car Corporation and AB VOLVO for use in connection with their respective businesses. The Complainant is also the owner of several registered trademarks for VOLVO OCEAN RACE in more than 40 countries through out the world, e.g. VOLVO OCEAN RACE, CTM 3743028, registered on August 4, 2005 in classes 16, 18, 25, 28, 35, 36, 41 and 43 as well as VOLVO OCEAN RACE, DE 39834056 registered on June 17, 1999 in classes 16, 18, 25, 28, 41 and 43. The Complainant owns further numerous domain names with the designation VOLVO OCEAN RACE such a or .
The company history of the Complainant and its predecessors reaches back to 1915. The activities of the Complainant are conducted world wide. Several panels have already decided that the trademark VOLVO is considered as a famous mark (as an example Volvo Trademark Holding AB v. Unasi, Inc.WIPO Case No. D2005-0556 with further references).
In 1998, the Complainant purchased the rights to the Whitbread Round the World Race which is one of the premier World Ocean Races. The name of this event was subsequently changed to “Volvo Ocean Race”. This race is ranked among the top 20 sporting events in the world and is followed and viewed by millions world wide.
The Respondent registered the disputed domain name on February 21, 2007.
The Complainant has not licensed or otherwise permitted the Respondent the use of Complainant's trademarks. There is also no relationship between the parties which would justify the registration of the disputed domain name.
The Respondent is currently not using the domain name nor made any demonstrable preparations to use the domain name for a bona fide offering of goods and services.
On May 30, 2008, the Complainant sent a cease and desist letter to the Respondent informing it of the Complainant's rights to the marks VOLVO and VOLVO OCEAN RACE. The Respondent answered that it intends to create a computer software program that allows consumers and fans of the “Volvo Ocean Race” to access a website via cellular phones and receive real time updates on the race. During the negotiations with other sporting event organizations such as the America's Cup and the Barcelona World Race, the Respondent became aware of the possibilities that their services might have for other events. At the time of the registration of the domain name the Respondent was foreseeing a potential business and intended to get in touch with the organisation of the “Volvo Ocean Race” to find potential ways of collaborating in providing the above mentioned services. The Respondent confirmed that it knew about the “Volvo Ocean Race”, however was allegedly not aware of the existence of the community trademark registration 3743028.
Further reminders to settle the matter initiated by the Complainant were not answered by the Respondent. 5. Parties' Contentions A. Complainant
The Complainant claims inter alia that VOLVO is a famous trademark and that the disputed domain name is identical to the Complainant's trademark VOLVO OCEAN RACE. The Respondent has no rights or legitimate interest since the Complainant has not licensed or otherwise permitted the use of its trademarks to the Respondent. The Respondent is currently not using the domain name for any bona fide offering of goods and/or services. There are also no demonstrable preparations to use the domain name visible before the Respondent got notice of the dispute.
Even if the Respondent would have made demonstrable preparations to use the domain name, the Respondent would still not make legitimate non commercial or fair use of the domain name as the Respondent intentionally would attempt to attract for a commercial game, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source.
The disputed domain name was also registered and used in bad faith since the Respondent knew about the Complainant's rights herein by stating that a potential business was intended with the organisation of the VOLVO OCEAN RACE. By not further negotiating or even not responding to further approaches by the Complainant, the Respondent is preventing the Complainant and trademark holder from reflecting its trademark in a corresponding domain name and hereby attempting to disturb the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the policy have been satisfied:
(i) The domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid trademark rights for VOLVO OCEAN RACE in several classes.
The trademarks of the Complainant and the domain name in question are identical with respect to the second level domain which is the distinctive part of a domain name.
The Panel therefore considers the domain name in question to be confusingly similar to the trademark VOLVO OCEAN RACE in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no rights in the domain name in question since the Respondent is not a licencee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no legitimate interest in the disputed domain name since there is no indication that the Respondent is commonly known by the name “volvo ocean race” nor that the Respondent is using the domain name in question in connection with a bona fide offering of related goods or services. A mere desire to enter into a commercial relationship with the Complainant does not give rise to a right or legitimate interest in a domain name that fully incorporates a complainant's trademark. Also a non commercial or fair use is neither substantiated nor evidenced by the Respondent. C. Registered and Used in Bad Faith
The Respondent was well aware of the Complainant and its trademark when registering the disputed domain name. The Complainant had not authorized the Respondent to make use of its mark. The fact that the domain name may not currently be in active use in no way prevents a finding of bad faith in circumstances such as the present. See e.g. Telstra Corporation Limited v. Nuclear Marsh-mallows,WIPO Case No. D2000-0003. This Panel does not see any conceivable use that could be made by the Respondent of this particular domain name without the Complainant's authorization that would not amount to a violation of the Complainant's trademark rights.
In sum, the circumstances of this case clearly indicate that the Respondent registered the disputed domain name primarily with the intention of attempting to attract, for commercial gain, internet users to a potential website or other on–line locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location.
The Panel therefore considers the domain name in dispute to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 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 the Complainant.
Dietrich Beier
Sole Panelist
Dated: November 12, 2008
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