ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Volvo Trademark Holding Aktiebolag v. Whois Agent, Domain Protection Services, Inc. / Domain Admin, DomainNameNexus.com - This Domain is For Sale Case No. D2022-0911 1. The Parties The Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by Zacco Sweden AB, Sweden. The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America ("United States") / Domain Admin, DomainNameNexus.com - This Domain is For Sale, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Name.com, Inc. (Name.com LLC) (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2022. On March 16, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2022, 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 March 21, 2022 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 also on March 21, 2022. page 2 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2022. In accordance with paragraph 5 of the Rules, the due date for Response was April 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2022. The Center appointed Yuji Yamaguchi as the sole panelist in this matter on April 21, 2022. 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 paragraph 7 of the Rules. 4. Factual Background The Complainant is jointly and equally owned by AB Volvo and Volvo Car Corporation. The Complainant is the proprietor of the VOLVO trademarks, including United States trademark registration Nos. 1,220,779 (registered on December 21, 1982) and 3,207,372 (registered on February 13, 2007). The Complainant's VOLVO trademarks have been registered throughout the world, and the Complainant licenses the rights to use VOLVO trademarks to its shareholders, AB Volvo and Volvo Car Corporation in connection with their respective businesses. The VOLVO trademarks have 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, and have acquired a global reputation for products and services of high quality and safety through this use. The various entities in the AB Volvo Group and the Volvo Car Group hold registrations of and use a large number of domain names, such as , , and , that include the VOLVO trademarks. The disputed domain name was registered on June 1, 2020, and resolves to a website that provides payper-click (PPC) links and offers for sale the disputed domain name. 5. Parties' Contentions A. Complainant The Complainant's contentions may be summarized as follows: The disputed domain name is confusingly similar to the VOLVO trademarks in which the Complainant has rights. The VOLVO trademarks are included in its entirety in the disputed domain name, which in addition contains the generic term "spare parts". The addition of the generic Top-Level Domain ("gTLD") ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity between the VOLVO trademarks and the disputed domain name. There is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant, or that there is some kind of commercial relationship with the Complainant. By using the Complainant's trademarks as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainant's trademarks, which may result in dilution and other damage for the Complainant's trademarks. page 3 No license or authorization of any other kind has been given by the Complainant to the Respondent to use the VOLVO trademarks. Furthermore, the Respondent is not an authorized dealer of the Complainant's products or services and has never had a business relationship with the Complainant. It is clear that the disputed domain name is being used for a commercial purpose which will risk diluting and damaging the VOLVO trademarks, and that the Respondent is attempting to unfairly capitalize on the reputation and goodwill of the Complainant and the Complainant's trademarks for financial gain. The Respondent does not appear to have any actual use of the Complainant's trademarks, other than to direct users to its own commercial website displaying PPC links and offering the disputed domain name for sale. The VOLVO trademarks have the status of prominent trademarks within, but not limited to, the United States. The date when the Respondent registered the disputed domain name is subsequent to when the Complainant obtained registered trademark rights in the United States for VOLVO by decades. It is obvious that it is the fame and value of the VOLVO trademarks that has motivated the Respondent to register the disputed domain name. The fact that the disputed domain name refers specifically to "spare parts", a natural part of the Complainant's business, and the website's PPC links, of which several lead to sites operated by competitors to the Complainant, makes it obvious that the Respondent was fully aware of the Complainant and the VOLVO trademarks at the time of registration. The disputed domain name is offered for sale for a value exceeding the out-of-pocket costs directly related to its registration. People viewing the website content could easily assume that the content is sponsored by, or connected to, the Complainant, in one way or another. However, even if they would not make such connection, parked PPC sites could amount to bad faith use. The mere incorporation of a well-known mark into a domain name as, in effect, bait to attract visitors to a commercial website and boost traffic for commercial gain. Such use can amount to bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must assert and prove the following three elements are present: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of the VOLVO trademarks in its entirety along with "spare parts" without the space between the words, plus the gTLD ".com", which is generally disregarded as a technical requirement of the domain name registration. The VOLVO trademarks are globally known brands and remain clearly recognizable within the disputed domain name. Further, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), such as "spare parts", does not affect the finding of confusing similarity under the first element (see Scania CV AB v. Ana Garcia, WIPO Case No. D2013-1511 ( et al.); section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). page 4 Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's VOLVO trademarks. B. Rights or Legitimate Interests As the Complainant asserts, no evidence can be found indicating that the Respondent is using the name which includes "Volvo" or is granted a license or authorization to use the VOLVO trademarks. Moreover, the Respondent is operating a website under the disputed domain name displaying PPC links, which result in competing with or capitalizing on the reputation and goodwill of the Complainant's VOLVO trademarks or otherwise misleading Internet users (see section 2.9 of the WIPO Overview 3.0). Therefore, the disputed domain name is not considered to be used by the Respondent in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds that the Complainant has establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and then the burden of production is shifted to the Respondent. However, the Respondent neither submitted any response in this proceeding nor replied to the Complainant's cease and desist letters to it, which were issued on February 22, 2022, February 27, 2022, and March 7, 2022 respectively. Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Since the VOLVO trademarks are internationally famous as the luxury vehicle brand well before the disputed domain name registration, the Respondent knew or should have known of the Complainant's VOLVO trademarks at the time of the registration of the disputed domain name. Further, the VOLVO trademarks are considered to be the only distinctive element in the disputed domain name (see Volvo Trademark Holding Aktiebolag v. 杨 智超 (Zhichao Yang), WIPO Case No. D2020-3507). Moreover, the additional terms "spare parts" are related to the Complainant's products under the VOLVO trademarks. Therefore, the Respondent was aware of the Complainant and its trademarks when registering the disputed domain name, and Internet users may expect the disputed domain name to have some association with the Complainant or the AB Volvo Group or the Volvo Car Group. The Respondent's website using the disputed domain name which displays PPC links also provides a link stating: "This premium domain name is for sale. Click here to buy VolvoSpareParts.com", which leads to a website offering for sale of the disputed domain name for a price of USD 3,450. Such price clearly exceeds the normal out-of-pocket costs directly related to the disputed domain name. Further, the Respondent is apparently conducting its business under the name "Domain Admin, DomainNameNexus.com - This Domain is For Sale" and the name appears to show that the Respondent has registered domain names primarily for the purpose of selling the domain name registrations. The Respondent was previously ordered to transfer other domain names in recent UDRP decisions (see International Business Machines Corporation v. Domains By Proxy, LLC / Domain Admin, DomainNameNexus.com - This Domain is For Sale, WIPO Case No. D2018-2046; Agfa-Gevaert N.V. v. Registration Private, Domains By Proxy, LLC / Domain Admin, DomainNameNexus.com - This Domain is For Sale, WIPO Case No. D2020-1147). Moreover, the Respondent did not reply to the Complainant's cease and desist letters sent via the Registrar several times before the filing of this Complaint, which may be further evidence of bad faith. page 5 Consequently, the above-mentioned circumstances are sufficient for the Panel to conclude 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 be transferred to the Complainant. /Yuji Yamaguchi/ Yuji Yamaguchi Sole Panelist Date: May 5, 2022
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