WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Tarek Abd El Moaty
Case No. DWS2004-0001
1. The Parties
The Complainant is Volvo Trademark Holding AB, c/o AB Volvo, Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Tarek Abd El Moaty, Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on April 27, 2004. On April 28, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 28, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May�20,�2004. The Respondent requested an extension which has been granted. The new due date for response was May 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2004.
The Respondent then requested a further extension which was not granted. No response ever received.
The Center appointed Christophe Caron as the sole panelist in this matter on June�1,�2004. The Panel finds that it was properly constituted. The sole panelist 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 handles the famous trademark VOLVO throughout the world for many decades, beginning in the 1920s. The famous VOLVO mark, one of the best known trademark in the world today, is also registered extensively as a trademark and service mark in the United States and elsewhere throughout the world, including Egypt.
The Respondent registered the domain name on June 14, 2004. Exhibit F to the complaint is a copy of the domain name registration provided by Go Daddy Software.
The Complainant contacted the Respondent by an e-mail, dated March 24, 2004, to resolve the matter amicably by an assignment of the domain name to AB Volvo. The Respondent replied, by an e-mail, dated March 29, 2004, that the domain name “is for sale” and asked the Complainant to give him “a feed back along with your final offer”. On the same day, the Complainant proposed the Respondent to cover the registration costs concerning the domain name . On March 30, 2004, the Respondent refused the offer because “it’s too little” and, on April 2, 2004, he wrote that “in order to save our time and money in legal issues, this domain name is for sale by $2500”.
The Complainant demands that Respondent’s domain name be transferred to him.
5. Parties’ Contentions
A. Complainant
In the absence of a response from the Respondent the Panel can only consider the Complainant’s contentions. In summary, these are as follows :
(i) That the Complainant’s VOLVO mark is famous and is one of the best known trademarks in the world today
(ii) That the Respondent’s domain name is identical and is confusingly similar to complainant’s VOLVO mark
(iii) That the Respondent has no rights or legitimate interest in the domain name
(iv) That the Respondent registered and used the domain name in bad faith because he cannot conceivably claim to have been unaware of the famous VOLVO trademark and he wants to sell it to the Complainant for a sum far in excess of any legitimate costs he may have incurred in the registration of the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the domain name is identical to the registred trade mark “VOLVO” which falls into the category of a “famous mark” as one of the best known automobile and vehicle trade marks in the world. Many previous WIPO cases have already found that the VOLVO mark was famous (see, among several decisions, Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338.
The Panel also considers that the addition of “.ws” doesn’t change the fact that the domain is identical to Complainant’s famous VOLVO marks. In fact, the addition of the “.ws” has no legal significance in comparing the domain name and the Complainant’s trademark.
The Complainant therefore succeeds in respect of paragraph 4(a)(i).
B. Rights or Legitimate Interests
No evidence has been served or is relied upon by the Respondent to the effect that it has rights or legitimate interests in respect of the domain name.
The Respondent has never used, presently or in the past, the word “VOLVO” for a personal or business matter. Even if the Respondent considers himself as the “Director of the Egyptian Volvo fan club” (the existence of this fan club is not proven), he would have had to ask for a special authorisation to use the famous trademark VOLVO.
Also, on June 8, 2004, the web page currently displays a “holding page” provided by Respondent’s registrar, Go Daddy, and also states that the domain name is “for sale”.
In absence of any evidence of rights or legitimate interest in using the domain name , the Panel holds that the Complainant has succeeded in approving paragraph 4(a) (ii).
C. Registered and Used in Bad Faith
It should be noted that paragraph 4(b) of the Rules sets out circumstances which in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith.
Sub paragraph 4(b)(i) provides as an instance of registration and use of a domain name in bad faith circumstances in which the domain name have been registered “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name”
In the present case, the Respondent wanted to sell the domain name to the Complainant for $2500, which is far in excess of the normal out-of-pocket expenses directly related to the registration of a domain name. The panel notes that the registrar, Go Daddy Software, charges $7,95 to register a domain name. Furthermore, the respondent’s website indicates that the domain name is for sale, which is also satisfactory evidence that the Respondent wanted to make a illegitimate profit.
The Panel has also considered that the Respondent was obviously well aware of the existence and use of the famous trademark VOLVO.
And the Panel is satisfied that the Respondent did not register the domain name with the intent of legitimate use because no web site has been exploited with the domain name .
The bad faith of the Respondent in the registration and use of the domain name is therefore very clear.
It follows that the Complainant has succeeded in proving the three elements within 4(a) of the Rules.
7. Decision
The Panel decides that the domain name is :
(i) identical or confusingly similar to a trade mark to which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain has been registered and is being used in bad faith by the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Christophe Caron
Sole Panelist
Dated: June 10, 2004
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