Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by Zacco Sweden AB, Sweden.
Respondent is Domain Admin / Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. Respondent made a perfunctory but non-compliant response on May 21, 2020. The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on July 2, 2020. 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 Volvo Trademark Holding AB (“Complainant”) is jointly and equally owned by AB Volvo and Volvo Car Corporation (jointly referred to as “Complainant’s Parent Companies”). Complainant is the proprietor of the distinctive and well-known VOLVO trade marks, which have been registered throughout the world, and licenses the rights to use these trade marks to its shareholders; Complainant’s Parent Companies in connection with their respective businesses. Complainant is the owner of, among others, several trade mark registrations in the United States for the VOLVO word mark (“Complainant’s Mark”), which covers the jurisdiction where the underlying registrant is situated. Complainant’s Mark has been used intensively for more than 90 years for a wide variety of products and services such as cars, trucks, buses, construction equipment, marine engines, and industrial power systems. Through this use Complainant has acquired a global reputation for products and services of high quality and safety, which has been recognized in several previous decisions under the Policy. The various entities in Complainant’s Parent Companies hold registrations of and use a large number of domain names that includes Complainant’s Mark, including the domain names for The Domain Name is currently, connected to a website offering various Volvo service manuals for sale, while using and reproducing Complainant’s original content. On January 15, 2020, Complainant issued a cease-and-desist letter to Respondent, requesting that the Domain Name be transferred to Complainant. Several reminder emails were also sent but no response was received. Complainant then contacted the hosting provider and it was agreed to shut down the website. Shortly thereafter Respondent re-activated the website via a new hosting provider. According to the publicly available WhoIs, the Domain Name was registered on December 21, 2016. 5. Parties’ Contentions A. Complainant Complainant claims that the Domain Name is confusingly similar to Complainant’s Mark as it is included in its entirety in the Domain Name, with the addition of the word “manuals”. Complainant submits that there is a risk that the Internet public will perceive the Domain Name either as a domain name owned by Complainant, or that there is a commercial relationship with Complainant, and that as such Respondent is exploiting the goodwill and the image of Complainant’s Mark, which may result in dilution and other damage to Complainant’s Mark. Because the Domain Name is owned by “Domain Admin Whois Privacy Corp.”, details of the underlying registrant have not been disclosed. Complainant states that in order to obtain further information about Respondent, it conducted a test purchase for some of the manuals and documents available at the Domain Name. The receipt from that purchase indicated the merchant was Massey Unlimited Tampa, FL 33602 US, with an email at Complainant contends that it then carried out an online search of this company, but was unable to find any information indicating that it was an actual business. Complainant states that it found the only contact information available from the website connected to the Domain Name is the email address Complainant goes on to assert that no license or authorization has been given to Respondent to use Complainant’s Mark and furthermore, Respondent is not an authorized dealer of Complainant’s products or services and has never had a business relationship with Complainant. Complainant claims that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services but rather Respondent has intentionally chosen the Domain Name based on another trade mark in order to generate traffic and income through a website offering unauthorized reproductions of various Volvo service manuals for sale. Complainant submits that the Domain Name is being used for a commercial purpose and claims that Respondent has copied material from Complainant’s own website in order to create the impression that the Domain Name is connected to Complainant. By way of example, Complainant asserts that the background photo available on the main site of the Domain Name has been copied from Complainant’s own website. Complainant points out that the documents purchased from Respondent’s website were in fact reproductions of Complainant’s own material, being: -“Volvo L90C Wheel Loader Service Repair Manual” Complainant states that it and its employees, primarily through Complainant’s division “Volvo Construction Equipment”, had created most of the original content of these manuals. Some content has also been copied from the Complainant’s own application called PROSIS. For example, the “Volvo L90C Wheel Loader Service Repair Manual” was originally released in 1998/99, and is regularly updated in the PROSIS application. The manual is made accessible to authorized resellers through the application or by printed copies. Complainant has never made this particular manual accessible through a PDF document. Rather, Respondent appears to have copied the original content (originating from May 22, 2014) from the Complainant’s application, and has then reproduced that content through a separate PDF document. The original version was created by Complainant in June 15, 2006. Complainant contends that the above materials amount to original works and as such are protected by copyright. Accordingly, Complainant has the exclusive right to reproduce and make copies of such original works. Further, the manuals in question are outdated meaning they are no longer fully reliable, which can cause damage in the event that the end user relies on the accuracy of the material in question. Complainant argues that if the end user believes that the Domain Name is sponsored by, or connected to, Complainant they are likely to assume that its contents are up to date and legally endorsed by Complainant, which is not the case. Complainant points out that Respondent is also using Complainant’s Mark protected logotype in the website browser in a similar manner compared to how Complainant is using the logotype in its own website browser at “www.volvo.com”. Complainant submits that the Domain Name has been registered and is being used in bad faith. B. Respondent An email from Respondent was received by the Center on May 21, 2020 acknowledging receipt, although no response to the allegations contained in the Complaint was given. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant is the proprietor of the distinctive and well-known VOLVO trade mark, referred to in this decision as Complainant’s Mark. Complainant’s Mark has been used for approximately 90 years for a variety of vehicles, engines and industrial power systems. Complainant’s Mark has been registered and licensed throughout the world, including in the United States, which covers the jurisdiction where Complainant alleges Respondent resides. Complainant submits that the Domain Name includes Complainant’s Mark in its entirety and is confusingly similar to Complainant’s Mark. That submission has merit. Accordingly, the Panel finds that: Complainant has rights in respect of Complainant’s Mark; and the Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant alleges that Respondent has copied material from Complainant’s website and that the Domain Name resolves to a website offering various Volvo service manuals for sale and reproducing Complainant’s original content. Complainant submits that this conduct is misleading, insofar as it creates the impression that the Domain Name is connected to Complainant. There is however no evidence that Respondent is affiliated in any way with Complainant. Nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. In the absence of a formal response from Respondent or any attempt to justify its actions, the Panel infers that Respondent is, without colour of right, using the Domain Name to attract Internet users to a website for commercial gain. Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith Given Complainant’s use and registration of Complainant’s Mark, its long-standing use and its international repute, including in the United States, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name. In that regard the Domain Name includes Complainant’s Mark in its entirety, plus the addition of the word “manuals”. In relation to the supply of the vehicle manuals this represents use of a term, apt for such use, in conjunction with a well-known trade mark. Internet users seeing the Domain Name are likely to mistake it for a name related to or associated with Complainant. The make-up of the Domain Name therefore reinforces Respondent’s registration and use of the Domain Name in bad faith. Taking into account the evidenced commercial use of the Domain Name provided by Complainant, the Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name and since. The Panel thus finds that the third limb of the Policy has been met. 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 Name Clive L. Elliott Q.C.
-“Volvo EC35 Compact Excavator Illustrated Parts Manual”
-“Volvo L90C Wheel Loader Operation and Maintenance Manual”
Sole Panelist
Date: July 16, 2020
Full & Egal Universal Law Academy