The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Wang Songxu of Weifang, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On February 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2013, the Registrar 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 March 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on April 4, 2013. 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 corporation which owns 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, buses, construction equipment, marine and industrial engines, and many other goods and services. In 1935, AB Volvo was introduced on the Stockholm Stock Exchange. The VOLVO trademark, 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 large number of trademark registrations for VOLVO in numerous country of the world, including China, where the Respondent is located.
The disputed domain name was registered on November 22, 2012 and it resolves to a website where pornographic images are displayed with text in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant contends that, by virtue of the Complainant’s 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 the disputed domain names transferred from the respondents in those cases, to the Complainant.
The Complainant contends that the disputed domain name is confusingly similar to the trademark VOLVO, as it incorporates the entirety of the world famous VOLVO mark with the addition of the generic term “rss” (that is a generic term for Rich Site Summary); such minor addition is not sufficient to distinguish the disputed domain name from the famous trademark owned by the Complainant or to avoid confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of 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 trademark, or the fact that the mark is owned by the Complainant. The Respondent did not have any permission or authorization or license to use VOLVO as part of a domain name or in any other way.
The Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain name “without intent for commercial gain”. The disputed domain name resolves to a website where pornographic images are displayed with text in Chinese.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent chose the disputed domain name with full knowledge of the Complainant’s rights therein, and there is no reason for the Respondent to use the VOLVO trademark in its domain name except to try to sell it to the Complainant and prevent the Complainant from registering the said domain name or for other commercial gain. Moreover the Respondent’s use of the disputed domain name violates the terms of the Go Daddy Universal Terms of Service Agreement and is a blatant infringement and dilutes the strength of the Complainant’s trademark rights. If the Respondent is permitted to continue to use the disputed domain name, the public will continue to be confused into believing or assuming that the Complainant has no objection to such use of its trademark in the disputed domain name. The Complainant’s famous mark, which is an invaluable asset, would be irreparably damaged.
The Respondent’s registration and use of the disputed domain name have been committed with the intent and purpose of creating a likelihood of confusion and exploiting the Complainant’s considerable goodwill and reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name registered by the Respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Having considered the Complainant’s submissions and the evidences adduced with the Complaint, this Panel finds that the Complainant has established that it owns prior rights in the VOLVO trademark and that the disputed domain name is confusingly similar to the Complainant’s VOLVO trademark which falls in the category of a “famous mark”.
Indeed, as submitted by the Complainant and as several prior UDRP panels have held, this Panel finds that the Complainant’s trademark VOLVO, has to be considered a strong, distinctive and famous mark, on the basis of its worldwide use, reputation and goodwill in connection with automobiles, other vehicles and several connected products.
The Complainant owns numerous VOLVO trademark registrations all over the world, in the European Union, in the United States and in China, where the actual registrant of the disputed domain name is located. This Panel took a look at the list of Chinese trademark registrations owned by the Complainant, and checked out that all the Chinese trademark registrations for VOLVO precede by decades the date upon which the Respondent registered the disputed domain name (i.e. November 22, 2012). In particular, the first Chinese trademark registration for VOLVO, No. 1147127, was registered on January 28, 1998.
In the present case, the disputed domain name incorporates the Complainant’s worldwide famous and widely-registered trademark VOLVO with the addition of the generic term “rss” (the abbreviation for Rich Site Summary, a format used to publish frequently updated works - such as blog entries, news headlines, audio, and video - in a standardized format). The addition of such generic term is purely descriptive and is not enough to prevent confusing similarity between the disputed domain name and the incorporated well-known trademark but may actually increase the likelihood of confusion (see America Online Inc., v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709, PepsiCo, Inc. v. QWO,WIPO Case No. D2004-0865).
See, also, Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word ‘harrods’ and the word ‘travel’, it is well settled that a domain name suffix, such as the word ‘travel’ in the present case, is merely descriptive and does not add any distinctiveness to the word ‘harrods’, which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v. Vineet Singh,WIPO Case No. D2001-1162, where the [p]anel held that ‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services’. See also Harrods Limited v. Brad Shaw,WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ‘poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
With regards to the suffix “.info” (which indicates that the domain name is registered in the “.info” gTLD), as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447 and Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457), it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
In light of the above reasoning, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s worldwide known and widely-registered trademark VOLVO, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights for several years; therefore the Panel finds that the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has not been and is not commonly known by the VOLVO mark or the disputed domain name, and it has not acquired any trademark or service mark rights in that name or mark. Moreover, the Respondent was not licensed or otherwise permitted to use the Complainant’s widely-known and widely-registered VOLVO trademark.
Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. Indeed the use of the website for the provision of pornographic material can in no way constitute a legitimate noncommercial or fair use of disputed the domain name in this case.
In light of the circumstance that VOLVO is a well-known mark, it is very unlikely that the Respondent would have been unaware of the Complainant or its mark. On the contrary, the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant’s mark and name for its own profit, by misleading and diverting consumers to its own website, or for the purpose of tarnishing the Complainant’s trademark. Such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. And 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 such mark would have been inevitable.
Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred from the fact that no response was filed by the Respondent. According to earlier UDRP decisions (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090) it may be the case that “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.
Therefore, based on the evidence, the Panel is satisfied that the second element is met. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant’s VOLVO trademark and activity are very widely-known throughout the world and considering the widespread use, fame and reputation of VOLVO name and mark, also in China where the Respondent is located, in this Panel’s view the Respondent must have been aware of them when it registered the disputed domain name.
The choice of the disputed domain name by the Respondent, in the Panel’s view, could not result from a mere coincidence.
In line with other prior UDRP decisions (Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395), the Panel believes that, in the absence of any rights or legitimate interests and lacking any contrary evidence by the Respondent, the registration of the disputed domain name confusingly similar to the Complainant’s widely-known trademark may suggest opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411 mentioned in the Complaint).
Concerning the use of the disputed domain name, the Complainant has proven that the disputed domain name resolves to a website where Internet users find pornographic material.
This Panel agrees with several prior UDRP decisions (see e.g. Ty, Inc. v. O.Z. Names,WIPO Case No. D2000-0370, Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362, Dell Computer Corporation v. RaveClub Berlin,WIPO Case No. D2002-0601 Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022, and Miroglio S.p.A. v. Mr. Alexander Albert W. Gore,WIPO Case No. D2003-0557) that the redirection to pornographic sites from a domain name incorporating a well-known trademark is evidence of bad faith. As the panel stated in Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022):
“Preliminary, it is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith.”
Therefore in the Panel’s view, the Respondent’s intention has been to attract or misleadingly divert Internet users to the Respondent’s website either for commercial gain or for the purpose of tarnishing the Complainant’s trademark.
Indeed, by exploiting the renown of the VOLVO trademark, the Respondent diverts Internet users looking for the Complainant’s marks and website and seeks to gain profit out of the disputed domain name from the diverted traffic or to tarnish the Complainant’s trademark. In this Panel’s view Internet users seeking information on Volvo, accessing the disputed domain name, would have the legitimate expectation to find information relating to the Complainant and/or its automobiles and would, consequently be misled, to the possible detriment of the Complainant because of the existence of pornographic material. Even if, in this Panel’s view, most Internet users would not believe that the Complainant has endorsed or authorized such 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 would cause the tarnishment of the VOLVO trademark and the dilution of its strength (see Volvo Trademark Holding AB v. Jinjin Zhang,WIPO Case No. D2010-1930, cited by the Complainant, where the panel stated that “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 light of the above circumstances, the Panel is satisfied that the third element under paragraph 4(a) of the Policy is met and that the disputed domain name was registered and is being 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 disputed domain name be transferred to the Complainant.
Alessandra Ferreri
Sole Panelist
Date: April 18, 2013
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