The Complainant is Volvo Trademark Holding Aktiebolag c/o AB Volvo, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is 张慧 (Zhang Hui), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2020. On July 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to its Complaint. The Complainant filed an amendment to the Complaint in English on July 18, 2020. On July 17, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 18, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amendment to 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 in English and Chinese of the Complaint, and the proceeding commenced on July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2020. The Center appointed Joseph Simone as the sole panelist in this matter on August 24, 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 The Complainant is the owner of the VOLVO trademark, which it licenses to its joint shareholders, AB Volvo and Volvo Car Corporation, for use in connection with their respective businesses. The Complainant holds a large number of trademark registrations for VOLVO in many countries and regions of the world, including the following: - VOLVO, Chinese Trademark Registration No. 19202460, registered on April 7, 2017 in classes 7, 12, 37; - VOLVO, Chinese Trademark Registration No. 1060406, registered on July 21, 1997 in class 12; and - VOLVO, United States of America (“United States”) Trademark Registration No. 1220779, registered on December 21, 1982 in class 12. The VOLVO trademark has been used extensively for more than 90 years and in connection with a wide variety of products and services, including cars, trucks, marine engines, and industrial power systems. The VOLVO brand is recognized as one of the most valuable brands worldwide. The AB Volvo and Volvo Car Groups also hold various domain name registrations containing the VOLVO trademark, including The disputed domain name was registered on November 27, 2018, and previously resolved to a website displaying pornographic content in Chinese and containing links to gambling websites. 5. Parties’ Contentions A. Complainant The Complainant claims that the disputed domain name is identical or confusingly similar to the VOLVO trademark in which it has rights, as the disputed domain name incorporates the VOLVO trademark in its entirety plus the descriptive terms “trucks” and “club” – the presence of which should not prevent a finding of confusing similarity. Next, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither commonly known by the disputed domain name, nor has it been authorized by the Complainant to use the trademark VOLVO. Further, the Respondent previously used the disputed domain name – which by itself suggests an attempt to affiliate with the Complainant – to generate traffic to a website that displayed pornographic content and sponsored links and advertisements connecting to various commercial websites. The Complainant also contends that the disputed domain name was registered and has been used in bad faith. The disputed domain name was registered in 2018, decades after the Complainant obtained trademark registrations for VOLVO in China and other countries. The fact that the disputed domain name also contains the term “trucks” – one of the Complainant’s core areas of business – makes it apparent that the Respondent was fully aware of the Complainant’s distinctive trademark and business when it chose to register the disputed domain name. Further, the Respondent had been using the disputed domain name to direct users to a pornography website with third party gambling links for its own commercial gain. When the original hosting provider of the disputed domain name shut down the website in response to the Complainant’s petition, the Respondent simply ignored the Complainant’s outreach and reactivated the website through a new hosting provider. Therefore, the circumstances dictate that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding In accordance with paragraph 11 of the Rules: “[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” As the language of the Registration Agreement is Chinese, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding. It would be cumbersome and costly for the Complainant if it were required to proceed using the Chinese language. Further, the Respondent claimed on the website to which the disputed domain name resolved that it operates in the United States, and the disputed domain name is registered in Latin characters and contains generic English terms. The key consideration in choosing the language of the proceeding is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceeding in both Chinese and English, and did not respond regarding the choice of language, or submit a formal response to the Complaint. Therefore, the Panel believes there would be no prejudice to the Respondent by proceeding in English. By contrast, requiring the Complainant to submit the Complaint in Chinese would be a waste of resources and would unduly delay the proceeding. Therefore, the Panel has decided that the language of the proceeding shall be English and shall proceed with a decision in English. A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy). The Complainant has demonstrated valid rights in the trademark by providing evidence of trademark registrations for VOLVO. The test for whether a domain name is identical or confusingly similar to the complainant’s trademark is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term may however bear on assessment of the second and third elements (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284). Here, the disputed domain name consists of the Complainant’s distinctive trademark VOLVO in its entirety, plus the additional descriptive terms “trucks” and “club”. The addition of these descriptive terms does not preclude a finding of confusing similarity. The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and the first element is established. B. Rights or Legitimate Interests Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). While the overall burden of proof rests with the complainant, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production for this element shifts to the respondent to produce evidence demonstrating its rights or legitimate interests in the domain name. If the respondent then fails to meet its burden, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submits that it has not provided a license to, or otherwise permitted the Respondent to use its trademark. The Respondent is not an authorized dealer of the Complainant’s products and services and has never had a business relationship with the Complainant. There is also no evidence that the Respondent is commonly known by the disputed domain name. Therefore, under these circumstances, the Complainant has established a prima facie case, which the Respondent has failed to rebut. In accordance with paragraph 4(c) of the Policy, the Panel may also consider whether the Respondent is making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers. In this regard, the Respondent’s use of the disputed domain name will not be considered “fair” if it falsely suggests an affiliation with the trademark owner, such as where the disputed domain name is identical to the Complainant’s trademark. Where the disputed domain name contains certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, further examination of the broader facts and circumstances of the case by the Panel is normally required to assess the Respondent’s rights or legitimate interests. These facts and circumstances include, inter alia, whether the disputed domain name has been registered and is being used for legitimate purposes and is not as a pretext for commercial gain. See generally section 2.5 of the WIPO Overview 3.0. In the present case, the disputed domain name is comprised of the Complainant’s distinctive and well-recognized trademark in its entirety and the additional descriptive terms “trucks” and “club”, which reference the products and services in relation to which the Complainant’s trademark is used. The Complainant has submitted evidence demonstrating that the Respondent used the disputed domain name to redirect users to a website displaying pornographic content and links to gambling websites, with no apparent purpose other than its own commercial gain. This cannot be said to confer any rights or legitimate interests on the Respondent. In view of the foregoing, the Panel finds that the second element of the Policy has been satisfied. C. Registered and Used in Bad Faith Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). Bad faith under the Policy is understood to include circumstances where: “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location” (paragraph 4(b)(iv) of the Policy). In assessing this element, UDRP panels may take into consideration factors such as the nature of the domain name, the content of the website to which the disputed domain name directs, and other indicia that the respondent had somehow targeted the complainant. See section 3.2.1 of the WIPO Overview 3.0. The Panel in this case finds that the disputed domain name was registered and is being used in bad faith. The disputed domain name here fully incorporates the Complainant’s well-recognized and distinctive trademark VOLVO, which has achieved a high degree of reputation and fame throughout the world, including in China, where the Respondent resides, and in the United States, where the Respondent claims to be operating. Further, the disputed domain name was registered in 2018, many decades after the Complainant began using and developing the VOLVO trademark. Given this, it is inconceivable that the Respondent was wholly unaware of the Complainant’s trademark and prior rights when it registered the disputed domain name. The Respondent is also using the disputed domain name in bad faith. The Complainant has shown that the Respondent used the disputed domain name to redirect users to a website offering pornographic content and third-party commercial links. Given the likelihood that Internet users will come across the disputed domain name when searching for the Complainant’s official websites, there is a real risk that the Complainant’s reputation and goodwill in the VOLVO trademark will be tarnished. The fact that the disputed domain name no longer resolves or redirects to an active website does not prevent a finding of bad faith, given the prior use of the disputed domain name, the implausibility of any good faith on the part of the Respondent, and the fact that the disputed domain name reproduces the Complainant’s distinctive mark in its entirety. In the absence of any evidence to the contrary, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Therefore, the final requirement of the UDRP is satisfied. 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 Joseph Simone
Sole Panelist
Date: September 7, 2020
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