The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Glenn Karlsson-Springare of Huddinge, Sweden. 2. The Domain Names and Registrars
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2012. On January 3, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On January 3, 2012, 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” 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 January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2012.
The Center appointed Petter Rindforth as the sole panelist in this matter on February 9, 2012. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The Complainant is the registered owner of the VOLVO trademark throughout the world and licenses the VOLVO trademark to the companies AB Volvo and Volvo Car Corporation - each of which owns 50% of the Complainant - for use in connection with their respective business.
The Complainant’s predecessor was founded in 1915, and in 1927 the construction of VOLVO cars began, followed by production of trucks, bus chassis and marine engine. In 1935, AB Volvo was introduced on the Stockholm Stock Exchange (in Sweden). The trademark VOLVO, alone and in combination with other terms and designs, is registered extensively as a trademark and service mark worldwide.
The Complainant has submitted evidence (Exhibits B, C and D of the Complaint showing Certificates of Registrations) that it is the owner of a number of trademark registrations for VOLVO as a word mark or as a figurative mark, such as
VOLVO (word), Reg. No. 636,128; registered October 23, 1956 for goods in Class 12 - issued by the United States Patent and Trademark Office (“USPTO”);
VOLVO (fig), Community Trademark Registration (CTM) No. 9,045,311; registered September 27, 2010 for goods in Classes 7, 12 and 28;
VOLVO (fig), CTM No 4,804,522; registered September 18, 2008 for goods and services in Classes 1, 2, 3, 4, 6, 7, 9, 11, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 41
VOLVO (word), CTM No 2,361,087; registered June 20, 2005 for goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42
VOLVO (word), CTM No 2,347,193; registered January 28, 2003 for services in Classes 35, 36, 39
A Community Trademark Registration automatically includes Sweden, being a member of the European Union.
The disputed domain names and were registered on October 3, 2011. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant states that, by virtue of the long and extensive use, the VOLVO mark has become famous, and it is one of the best known trademarks in the world today. The VOLVO mark is well recognized as a symbol of the highest quality in vehicles and other goods and is associated exclusively with the Complainant.
Further, the Complainant refers to more than 25 prior UDRP cases wherein the Complainant’s trademark VOLVO was found to be famous and transferred from respondents in those cases, to the Complainant.
The Complainant argue that the disputed domain names are confusingly similar to the trademark VOLVO, as they consist of VOLVO with the generic addition of the word “concept” (being generally used for a car that showcases new styling and new technology, as shown in Exhibits G and H of the Complaint) in and the word “environment” in .
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent is not making any legitimate noncommercial or fair use of or , the Respondent is not commonly known as VOLVO, and the Complainant has not authorized the Respondent to use the VOLVO trademark.
Finally, the Complainant argues that the disputed domain names are both registered and used in bad faith.
The Complainant concludes that there is no reason for the Respondent to use the Complainant’s trademark in the disputed domain names other than to try to sell them to the Complainant and prevent the Complainant from registering said domain names.
The Respondent was obviously aware of the Complainant’s trademark rights to VOLVO at the time of registration. The Respondent is based in Sweden, where the Complainant is the largest employer.
The Respondent’s bad faith registration is further evidenced by the fact that the Respondent on October 2, 2011, sent an unsolicited email to the Complainant, informing the Complainant of the disputed domain names - as well as others hold by the Respondent - and offering to sell these to the Complainant (Exhibit K of the Complaint). The Complainant responded to the Respondent and demanded that the Respondent transfer the disputed domain names without any payment to the Respondent. After a further reminder to the Respondent, the Respondent replied on November 13, 2011, now claiming that the disputed domain names were not for sale and that they were registered as a “hobby“ (Exhibit N of the Complaint). The Respondent sent the said reply days before the decision issued in F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727.
Referring to prior UDRP cases, the Complainant concludes that the Respondent appears to have registered a number of different domain names that correspond with car manufacturers, all registered on the same day, October 3, 2011, and all for commercial gain.
The Complainant requests that the Panel issue a decision that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the VOLVO trademark, registered and well-known in a number of countries, including Sweden – the home country of the Respondent.
The relevant part of the disputed domain names are “volvoconcept” and “volvoenvironment”. The Panel concludes that the domain names consist of the Complainant’s trademark VOLVO, with the addition of the generic words “concept” and “environment”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark.
The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”); see also F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727, and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare,WIPO Case No. D2011-2121 (“The additional word “environment” following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.)
The Panel therefore concludes that and are confusingly similar to the Complainant’s trade mark VOLVO. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name/s incorporating the trade mark VOLVO. See Compagnie de Saint Gobain v. Com-Union Corp.,WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain names, enabling it to establish a legitimate interest in and/or , nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names. On the contrary – the Panel finds that the Respondent’s initial offer to sell the disputed domain names to the Complainant clearly indicates that both and/or have been both registered and used only in order to sell them to the Complainant. Such use can never establish legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
As the Complainant has described and proved, the trademark VOLVO is well-known and the trademark registrations are covering, among other countries, Sweden – the home country of the Respondent.
The Respondent appears to have registered a number of different domain names that correspond with car manufacturers. See F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727, and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare,WIPO Case No. D2011-2121. This further indicates that the Respondent also registered the disputed domain names well aware of that VOLVO is a well-known trademark in the name of the Complainant.
Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry - Succession Saint Exupéry - D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085.
As also shown by the Complainant, the Respondent has used and to offer them for sale directly to the Complainant. Although no specific amount was mentioned in the initial email, the Panel concludes that the Respondents late reply that the disputed domain names were not for sale was an attempt to force the Complainant to come back with an offer of a considerable amount to meet the Respondent’s initial sales offer.
This use of the disputed domain names primarily for the purpose of selling or renting it to the Complainant for a monetary consideration in excess of the Respondent’s out-of-pocket expenses directly related to the disputed domain names, are evidence of registration and use of the disputed domain names in bad faith.
The Panel concludes that the disputed domain names are both registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: February 20, 2012
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