The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Jinjin Zhang of Liaoning, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2010. On November 10, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 10, 2010, GoD, Inc. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on December 6, 2010. 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 a Swedish corporation which owns the VOLVO trade mark throughout the world. It licenses the VOLVO trade mark to AB Volvo (“ABV”) and Volvo Car Corporation (“VCC”) for use in connection with their respective businesses. ABV and VCC each own a 50% share in the Complainant.
The predecessor of the Complainant, and of ABV and VCC was founded in 1915. In the Complaint, it is stated that the relevant predecessor companies and licensees have been selling cars, trucks, buses, construction equipment, marine and industrial engines, components for airplanes and rocket engines, etc. under the VOLVO mark throughout the world since the 1920’s. In the United States of America, the VOLVO mark has been used on cars and other products since the 1950’s.
The VOLVO mark, alone and/or in combination with other terms and designs has been registered in many countries worldwide including the United States of America, and the People’s Republic of China where the Respondent is located. The Complainant asserts that by virtue of long and extensive use, the VOLVO mark has become famous and is well recognized. The VOLVO mark has been found to be famous in many earlier UDRP proceedings and on this point the Complainant cited numerous cases where the mark was found to be famous (e.g., Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338, Volvo Trademark Holding AB v. Eurovendic (erik schroder),WIPO Case No. DNU2001-0001, Volvo Trademark Holding AB v. e-motordealer Ltd.,WIPO Case No. D2002-0036; Volvo Trademark Holding AV v. Roger Nichols,WIPO Case No. DTV2001-0017).
The disputed domain name was registered on April 6, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts, firstly, that the disputed domain name is confusingly similar to its VOLVO mark. The component “auto” in the disputed domain name adds to the similarity with the VOLVO mark since “auto” is a generic name for one of the Complainant’s primary and famous product lines: automobiles. The Complainant submits that this situation is akin to the facts in the UDRP cases involving and , wherein it was held that the addition of the generic terms “cars and “vehicles” did not dispel the confusing similarity, Volvo Trademark Holding AV v. Roger Nichols,WIPO Case No. DTV2001-0017; A.B.C. Carpet Co., v. Helen Gladstone,WIPO Case No. D2001-0521.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. None of the situations described in paragraph 4(c) of the Policy can be established in this case. The Respondent cannot conceivably claim to have been unaware of the famous VOLVO trade mark, or the fact that the mark is owned by Volvo.
The Respondent is clearly not making legitimate noncommercial or fair use of the disputed domain name “without intent for commercial gain”. The disputed domain name resolves to a website for the domain name where pornographic images are displayed with text in Chinese.
Thirdly, the Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith. The Respondent must have chosen the disputed domain name with full knowledge of the Complainant’s rights therein, and there is no reason for the Respondent to adopt the VOLVO trade mark in the domain name except to attract Internet users to its website to generate offers for the disputed domain name or to generate income from the sale of services. The registration of the disputed domain name must have been made with the intention to confuse the relevant purchasing public into believing that the Complainant maintains, or has approved, endorsed, or is the sponsor of, or is otherwise associated with the Complainant. Past UDRP decisions have held that bad faith use is established where a domain name contains a famous mark and the domain name resolves to a website with pornographic material. The Respondent’s use of the disputed domain name is a blatant infringement and dilutes the strength of the Complainant’s trademark rights. The public will naturally assume that the disputed domain name belongs to the Complainant or that the holder and user of the name has been authorized or endorsed by the Complainant. If the Respondent is permitted to continue to use the disputed domain name, the confusion would be perpetuated and members of the public would believe or assume that the Complainant has no objection to such use of the disputed domain name. The Complainant’s famous mark, which is an invaluable asset, would be irreparably damaged. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has trade mark rights in the word VOLVO and also accepts the Complainant’s submission that its mark is famous.
The Panel agrees that the inclusion of the generic word “auto” in the disputed domain name does not serve to negate the effect of confusion with the Complainant’s trade mark, and in fact adds to the confusion in view of the nature of the Complainant’s association with the automobile industry. It has also been established in earlier UDRP decisions that the incorporation of a descriptive or generic word may not serve to distinguish the domain name from the trade mark. (See L’oreal v. Domain Park Limited,WIPO Case No. D2008-0072; Gateway Inc. v. Domains by Proxy Inc. / NetWeb, Inc.,WIPO Case No. D2008-0063.)
As for the element “.info” in the disputed domain name, the principle that has been well established by many UDRP decisions is that the top-level domain should be ignored when assessing whether a domain name is identical or confusingly similar to a complainant’s trade mark.
The Panel agrees that the disputed domain name is confusingly similar to the Complainant’s VOLVO mark, and accordingly finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy prescribes that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) have been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate non-commercial 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.”
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: there has not been any bona fide offering of goods or services on the Respondent’s website; the Respondent has not been commonly known by the disputed domain name, and the use of the website for the provision of pornographic material can in no way constitute a legitimate non-commercial or fair use of the domain name.
In view of the fact that VOLVO is a well-known mark, it is totally inconceivable in the Panel’s view that the Respondent would have been unaware of the Complainant or its mark. The incorporation of the trade mark VOLVO with the word “auto” is, in the Panel’s view, further indication that the Respondent was well aware of the Complainant and of its rights in the trade mark when it registered the disputed domain name. The only sensible inference to be drawn from this is that the Respondent’s intention was to misleadingly divert consumers to Respondent’s website. Even if there may not have been a specific intention on the Respondent’s part to tarnish the Complainant’s mark, the ultimate result of tarnishment of the mark would have been inevitable.
In the circumstances, the Panel has no difficulty making a finding that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances, any of which, if found by the Panel, would constitute evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the website or location.
The Respondent in this case chose a domain name incorporating and combining a well-known trade mark of the Complainant with the word “auto”. In the absence of any evidence to the contrary, what is evident to the Panel is that the Respondent’s intention has been to to attract or misleadingly divert Internet users to the Respondent’s website either for commercial gain or for the purpose of tarnishing Complainant’s trademark. Internet users seeking information on Volvo would very naturally expect to find on the domain name information relating to the company and/or its automobiles. What they would least expect to find at the website is pornographic material. Whilst the Panel is of the view that most Internet users would not believe that the Complainant has endorsed or authorized the use of the disputed domain name, the Panel agrees with the Complainant’s argument that the negative image and association created would be detrimental to the Complainant’s interests and the VOLVO mark would be tarnished. Such infringing use of the Complainant’s trade mark and manner of use of the website cannot by any means be considered to be bona fide.
In the circumstances, the Panel concludes that the registration and use of the disputed domain name have been in bad faith. The Complainant has therefore established its case under 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.
Francine Tan
Sole Panelist
Date: December 10, 2010
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