The Complainant is Volvo Trademark Holding AB of Gothenburg, Sweden, represented by Wallberg IP Advice, Denmark.
The Respondent is Peter Backe of Hong Kong, 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 April 1, 2017. On April 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. On April 24, 2017 the Respondent forwarded an email to the Center. The Center acknowledged receipt of the email on the same day denying that it had registered the domain name in bad faith, but consenting to the cancellation of the domain name or its transfer to the Complainant. The Complainant informed the Center on May 2, 2017 that it did not wish to suspend the proceedings to enter into settlement negotiations. Apart from the email of April 24, 2017, no formal response was filed with the Center.
The Center appointed Angela Fox as the sole panelist in this matter on May 12, 2017. 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, Volvo Trademark Holding AB, is jointly and equally owned by AB Volvo and Volvo Car Corporation. It is the proprietor of the VOLVO trademarks throughout the world, which it licenses to AB Volvo and Volvo Car Corporation in connection with their respective businesses. Volvo Car Corporation is the named sponsor of an annual international yacht race known as the Volvo Ocean Race.
The Complainant holds the registered rights to the trademark VOLVO OCEAN RACE including in China, the European Union, the United States of America and numerous other countries, dating from as early as 1998. Details of the latter registrations were annexed to the Complaint. The Complainant also owns the domain name which it uses to host a website relating to the Volvo Ocean Race, and numerous other domain names incorporating "volvooceanrace", details of which were also annexed to the Complaint. The Complainant also uses VOLVO OCEAN RACE as a user name for various social media accounts relating to the race, including on Facebook, Twitter and Instagram.
The Complainant's VOLVO trademarks have been used intensively for more than 80 years for a wide variety of products and services such as cars, trucks, buses, construction equipment and marine engines and industrial power systems. In respect of automobiles in particular, the VOLVO trademarks have an international reputation.
The disputed domain name was registered on April 21, 2016 by the Respondent, an individual based in Hong Kong, China. It does not appear to have been used except to host a generic page stating "Website coming soon! Please check back soon to see if the site is available". Prior to the Complaint being filed, the Respondent was approached by Volvo Ocean Race SLU to discuss the disputed domain name, which prompted the Respondent to reply on the same date, stating as follows:
"Dear Marion,
Yes, Mark asked if he could forward my details.
We bought this domain about a year ago as we were in the process of bidding to run the event here in Hong Kong. As we did not win the bid, we no longer need the domain either, and we are happy to transfer the domain name to the event.
We would sell the domain name for USD 1500 which would cover our costs during our bidding process.
I am available to talk over the phone tomorrow Wednesday at your suggested time 2-3 pm HKT.
Look forward to speak to you then.
Regards,
Peter"
This reply was passed through to the Complainant, who then wrote directly to the Respondent on March 14, 2017, stating that the Respondent had not been authorized to use or register a domain name that included the VOLVO or VOLVO OCEAN RACE trademarks, and asking for the disputed domain name to be transferred to the Complainant immediately without charge. No reply was received to this letter. Copies of the correspondence were annexed to the Complaint. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's VOLVO OCEAN RACE trademarks, differing only in the addition of the non-distinctive term, "hongkong", which corresponds to a geographical area, and the non-distinctive domain name suffix (".com"). The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent has not been licensed or authorized by the Complainant to use or register a domain name incorporating the Complainant's trademark. The Complainant also points to the Respondent's statement in correspondence that it registered the domain name speculatively and no longer needs it because it did not win the bid to host the event.
Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. In particular, the Complainant submits that the Respondent registered the disputed domain name in the full awareness of the Complainant's VOLVO OCEAN RACE trademark. The Complainant observes that the effect of that registration is to prevent the Complainant from reflecting its own upcoming VOLVO OCEAN RACE stopover in Hong Kong in a corresponding domain name, which it says indicates bad faith on the part of the Respondent. The Complainant also points to the Respondent's offer to sell the disputed domain name for US D1,500, which clearly exceeds the out-of-pocket costs directly related to the registration of the disputed domain name. B. Respondent
The Respondent did not formally reply to the Complainant's contentions. No exceptional circumstances explaining this has been put forward. Therefore, in accordance with paragraphs 14(a) and 14(b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate.
Although the Respondent filed no formal response, it did send an email to the Center on April 24, 2017. That email read as follows:
"Thank you for your email. Please note that you may use this email, […]@, for any further communication. There will be no need for sending letters by courier, email is fine.
Please see my response below:
- We (Pitchpole Asia Limited) do not agree that the domain name was registered in bad faith. We registered this domain during our process of bidding for an event that will be held in Hong Kong next year.
- We do not agree that the domain name is being used, has been used or will ever be used in bad faith. This domain was simply registered and has never pointed to any server outside godadddys default website.
- We have been willing to cooperate with Volvo regarding transferring/cancelling the domain name.After opening up for discussion, we did not hear back from them.
- We believe this issue could have been resolved many months ago if Volvo continued the discussions.
- With all the above said, we are great supporters of the Volvo Ocean Race and wish the event well.
Therefore, we agree to cancel the domain name or transfer the domain to Volvo. All transfer cost be covered by Volvo.
We will be waiting for your response.
Best regards,
Peter Backe"
The Center approached the Complainant with this email, but the Complainant was unconvinced that the Respondent would follow through and asked that the proceeding continue.
The Respondent's email constitutes an express and unequivocal consent to relief in the form of either cancellation or transfer of the domain name. As noted by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), this can in some circumstances allow a panel to order a remedy on that basis, or on the presumption that all three of the elements of the test have been met. However, Section 4.10 states that a panel may in its discretion prefer to issue a decision on the merits in scenarios including those in which a respondent has expressly disclaimed any bad faith, or where a complainant has asked for a recorded decision.
In this case, the Panel has come to the conclusion that a substantive decision on the merits is appropriate. The Respondent expressly denies that he acted in bad faith when registering the disputed domain name, and the Complainant has asked that the case continue. The Panel will therefore review the case and issue a substantive decision. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) a respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has proved that it has rights in the trademark VOLVO OCEAN RACE. The disputed domain name is similar to that trademark, differing only in the geographical term "Hong Kong" and the non-distinctive domain name suffix (".com").
As indicated by the Complainant, the Volvo Ocean Race event is scheduled to stop over in Hong Kong next year (i.e. in 2018). Consequently, the geographical term Hong Kong has a particular relevance in relation to the Complainant's trademark.
The mere addition of a geographical term typically has not been regarded as sufficient to distinguish a trademark and a domain name (see for example Playboy Enterprises International Inc.v. Zeynel Demirtas, WIPO Case No. D2007 concerning and PepsiCo, Inc v. Kieran McGarry, WIPO Case No. D2005-0629 concerning ). This is particularly the case where the geographical term has relevance to the business carried out under a trademark. In this case, the average Internet user encountering the disputed domain name is likely to consider it to be a domain name of, or in some way associated with or authorized by, the Complainant, due to the presence of the Complainant's trademark.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not using the disputed domain name, and in its email to the Center indicated that it registered the disputed domain name during their process of bidding to host the Complainant's Volvo Ocean Race event in Hong Kong.
Even if the Respondent had won the bid, it is questionable whether it would have been entitled, without the Complainant's consent, to register and use a domain name incorporating the Complainant's trademark, which was likely to lead Internet users to believe that it was connected to or authorized by the Complainant.
In the event the Respondent did not win its bid and is in no way associated with the Complainant or authorized by it to use the disputed domain name. It is clear that the Respondent has no rights or legitimate interests in the disputed domain name, whose use by it would be likely to mislead Internet users into believing that the Respondent is in some way related to or authorized by the Complainant.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In its email to the Center of April 24, 2017, the Respondent denies that it registered the disputed domain name in bad faith.
In practice, however, what the Respondent did was to speculatively register a domain name that was likely to mislead Internet users into believing that it was connected to or authorized by the Complainant, without having been authorized by the Complainant to do so. It did not win its bid to host the Complainant's event, and even if it had done so it is questionable whether the Complainant would have permitted the Respondent to register a domain name incorporating its trademark. Because the outcome of the bid was inherently uncertain, the Respondent's action had the potential to leave it in control of a domain name that was inherently confusingly similar to the Complainant's trademark, despite having no association with the Complainant or its event. That is in fact what has happened.
It is moreover evident that the Respondent intended to cover the costs of its bid, if unsuccessful, by selling the disputed domain name to the Complainant. The Respondent's email to the Complainant makes that clear, since it asked for "USD 1500 which would cover our costs during our bidding process" for the transfer of the domain name.
In the Panel's view, the Respondent's registration of the disputed domain name amounts to an attempt to hold the Complainant hostage for the costs of the Respondent's unsuccessful bid, by seeking those costs in exchange for the transfer of the domain name. In the Panel's view, this conduct amounts to bad faith. These circumstances also suggest that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant for costs in excess of its documented out-of-pocket costs directly related to the domain name, contrary to paragraph 4(b)(i) of the Policy. The fact that the Complainant may have used the domain name if it had won the bid is irrelevant, since it was not entitled to use the domain name in any event without the Complainant's consent, and the outcome of the bid was in any event uncertain.
Furthermore, the Panel notes the website is not being used. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
The Complainant therefore succeeds under the third element of the Policy. 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.
Angela Fox
Sole Panelist
Date: June 16, 2017
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