The Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / John Kaufman, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 29, 2020. 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 of the Complaint, and the proceedings commenced on August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on September 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 The Complainant is owned by AB Volvo and Volvo Car Corporation and is the proprietor of the VOLVO and VOLVO CARS trade marks. These marks have been registered in multiple jurisdictions around the world, including: - United States trade mark registration number 1220779, for VOLVO, registered on December 21, 1982; - European Union trade mark registration number 002361087, for VOLVO, registered on June 20, 2005; and - European Union trade mark registration number 010728731, for VOLVO CARS, registered on October 12, 2012. Numerous UDRP decisions have upheld the fame and reputation of the Complainant’s VOLVO mark and it owns numerous domain names containing the VOLVO or VOLVO CARS marks. The Complainant licenses the rights to use these marks to AB Volvo and Volvo Car Corporation in connection with their respective businesses. The disputed domain name was registered on December 24, 2018. It directs Internet users to a webpage featuring pay-per-click (“PPC”) advertisements which lead to websites advertising goods and services in competition with the Complainant and its owners. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the VOLVO and VOLVO CARS marks by virtue of its ownership of various trade mark registrations for those marks around the world. It contends that the disputed domain name is confusingly similar to the VOLVO CARS mark since it incorporates that mark (which is recognisable within the disputed domain name) with the addition of the geographically descriptive term “brooklyn” (referring to an area of New York where the Complainant’s licensees do business under the VOLVO and VOLVO CARS marks), and the generic Top-Level Domain (“gTLD”) “.com”. It says Internet users are liable to confuse the disputed domain name with the Complainant’s own domain name The Complainant submits that the Respondent must have known of the Complainant and its marks when it registered the disputed domain name, many years after the Complainant established its rights therein, and confirms that the disputed domain name was registered by the Respondent without its permission. It also states that the Respondent is not a licensee of the Complainant and there is no business relationship between them. It alleges that the Respondent “is simply trying to sponge off the Complainant’s trade mark for its own commercial benefit”. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it (the services offered on the Respondent’s website, accessible via the disputed domain name, having been commercial in nature); or has ever used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant argues that the Respondent has chosen the disputed domain name in order to generate traffic and income; and, worse, in doing so in fact leads Internet users looking for the goods and services authorised by the Complainant to goods and services offered in competition with the Complainant. The Complainant remarks that the Respondent does not appear to have any actual use of the Complainant’s marks on the website to which the disputed domain name is directed, and notes that the Respondent failed to respond to the Complainant’s cease and desist letter. The Complainant alleges that these circumstances lead to the conclusion that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the VOLVO and VOLVO CARS marks. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the VOLVO CARS mark, since that mark is recognisable within the disputed domain name and the addition of the geographical term “brooklyn” in the disputed domain name does not prevent a finding of confusing similarity. The Panel also finds that the disputed domain name is confusingly similar to the VOLVO mark, since that mark is recognisable within the disputed domain name and the addition of the dictionary term “car” and the geographical term “brooklyn” in the disputed domain name does not prevent a finding of confusing similarity. The disputed domain name is confusingly similar to the Complainant’s marks. The addition of the gTLD “.com” does not alter this conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Complainant’s VOLVO and VOLVO CARS mark are neither generic nor descriptive but enjoy a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use its marks, in a domain name or otherwise. There is no evidence that the Respondent has any rights or authorisation to use the Complainant’s marks, is commonly known by either of those marks or has chosen to use the Complainant’s marks in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. The redirection of Internet users to a website offering PPC links to competitors does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the Complainant’s VOLVO mark, which is incorporated in the disputed domain name with reference to the goods for which that mark is best known (namely, cars), is well known and has already been found by previous UDRP panels to be distinctive and to have a reputation, rather than being a descriptive or generic term. The Panel also notes that the disputed domain name was registered many years after the Complainant’s marks were registered and accepts that the disputed domain name was chosen by reference to them. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Complainant’s marks is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in its marks when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s marks. The disputed domain name is also being used in bad faith. It is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to competitors of the Complainant. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity through the use of a privacy service, has not responded to the Complainant’s cease and desist letter notifying it of the Complainant’s intention to take proceedings in relation to its registration and use of the disputed domain name, and has not participated in these proceedings. There is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to provide access to sponsored advertising for services that compete with the Complainant is without justification and is inconsistent with the Complainant’s exclusive rights in its VOLVO and VOLVO CARS marks. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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 Gareth Dickson
Sole Panelist
Date: September 17, 2020
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