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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. SC-RAD Inc.
Case No. D2003-0601
1. The Parties
The Complainant is Volvo Trademark Holding AB, C/O AB Volvo, VHK, Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is SC-RAD Inc., Bohemia, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <volvopolska.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2003. On August 1, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On August 1, 2003, BulkRegister.com 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 August 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2003.
The Center appointed Derek M. Minus as the sole panelist in this matter on September 25, 2003. 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.
The Panel is obliged to issue a decision on or prior to October 9, 2003, in the English language.
4. Factual Background
The following uncontested and unchallenged facts appear from the Complaint and the supporting documents submitted with it:
The Complainant is a corporation which owns the VOLVO trademark throughout the world and licenses this trademark to AB Volvo and Volvo Car Corporation for use in connection with their respective businesses. The Complainant’s predecessors in interest and licensees have been selling cars, trucks, buses, construction equipment, components for airplane and rocket engines and many other goods and services under the VOLVO trademark throughout the world for many decades, beginning in the 1920s. The VOLVO mark, alone and in combination with many other terms and designs, is registered extensively as a trademark and service mark in the United States and elsewhere throughout the world.
The VOLVO mark is well recognized as a symbol of the highest quality in vehicles
and other goods. By virtue of its long and extensive use, the VOLVO mark is
one of the best known trademarks in the world today. In many previous proceedings
under the UDRP, it has been found to be a famous mark in connection with the
sale of automobile and other vehicles. See Volvo Trademark Holding AB v.
Cup International Limited, WIPO Case No.
D2000-0338; Volvo Trademark Holding AB v. Eurovendic (erik schroder),
WIPO Case No. D2001-0001; Volvo Trademark
Holding AB v. e-motordealer Ltd., WIPO
Case No. D2002-0036; Volvo Trademark Holding AB v. Peter Lambe, WIPO
Case No. D2001-1292; Volvo Trademark Holding AB v. Nicklas Uvelov,
WIPO Case No. D2002-0521; Volvo Trademark
Holding AB v. Lost In Space, SA, WIPO
Case No. D2002-0445; Volvo Trademark Holding AB v. Roger Nichols,
WIPO Case No. DTV2001-0017, Volvo
Trademark Holding AB v. Soeren Groenlund, WIPO
Case No. DNU2002-0003 and Volvo Trademark Holding AB v. Nick Bauer,
WIPO Case No. D2002-1025.
The domain name <volvopolska.com> was registered by the Respondent on October 21, 2002.
5. Parties’ Contentions
The Complainant is the holder of the famous trademark "VOLVO" trademark used throughout the world for many decades, beginning in the 1920s. The VOLVO mark has been used on cars and other products in the United States since the 1950s. The VOLVO mark, alone and in combination with many other terms and designs, is registered extensively as a trademark and service mark in the United States and elsewhere throughout the world.
The Complainant argues that by virtue of its long use and the renown of Complainant’s mark, VOLVO is associated exclusively with the Complainant and the Respondent has no rights or legitimate interest to use the disputed domain name. Further, at the time the Respondent registered the domain name, the Complainant contends that the Respondent was on constructive notice of Complainant’s famous VOLVO mark by virtue of Section 22 of The Lanham Act, 15 U.S.C. §1072, in the United States.
The Respondent did not provide a reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities each of the following three elements:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The Panel is satisfied on the basis of the material submitted, that the Complainant is the owner of the trademark "VOLVO," which the Panel finds, is a famous trademark.
The domain name registered by the Respondent <volvopolska.com> is identical to and confusingly similar to the Complainant’s registered trademark "VOLVO," to which a generic top-level domain name ".com" and a geographically descriptive term for services, "polska" (which means Poland in Polish) have been added. It has previously been held in very many other proceedings before WIPO Panelists that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusing similar to the trademark.
The Panel adopts the findings in Harrods Limited v. John Griffin, WIPO
Case No. D2002-0641, where it was said that, "The only difference between
the disputed domain names and the HARRODS trademarks is the addition of the
geographic designation ‘usa’ to the HARRODS name. The geographic designation
‘usa’ adds nothing distinctive, and the emphasis remains on the name HARRODS
to attract the attention of Internet users"; and the decision in Microsoft
Corp. v. Webbangladesh.com, WIPO Case
No. D2002-0769, where the Panelist held that: "The evidence shows that
the Domain Name is identical to Complainant’s mark, differing only in the addition
of the geographic description ‘Bangladesh’ to the Microsoft mark. The Domain
Name bears an exceptional and confusing similarity to the Microsoft mark."
Similarly in this, the incorporation of a Complainant’s well-known trademark
"VOLVO" in the registered domain name is sufficient, despite the addition
of the geographic term, to find the domain name confusingly similar to the Complainant’s
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests
in the disputed domain name. By not submitting a response, the Respondent has
failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it
has rights or legitimate interest in the domain name. Further, there is no evidence
of any commercial relationship between the Complainant and the Respondent which
would entitle the Respondent to use the trademark, in fact any such relationship
is specifically disavowed by the Complainant.
Nor is there any evidence that the Respondent is commonly known by the domain
name or is making a legitimate non-commercial or fair use of the domain name
within the meaning of paragraph 4(c)(ii) or (iii) of the Policy. Instead,
the Complainant’s evidence suggests that the Respondent has attempted to use
the domain name for commercial gain.
The domain name diverts to a commercial site, "Town and Country Day Spa,"
offering hair care and beauty products for sale. Pursuant to Paragraph 10(a)
of the Rules, the Panel has conducted an independent review of the website deployed
at the domain name. There is no obvious, or conceivable connection between the
domain name incorporating the Complainant’s mark, made famous in relation to
the manufacture of high quality automobiles and trucks and a salon or day spa
situated in New York State, USA. The salon also has its own separate domain
name, appropriately, <townandcountrysalon.com> and the term "volvopolska"
appears nowhere on the site. The only possible link is that the site is (advertised)
as designed by SC-RAD, the Respondent. Investigation of the Respondent’s website
at "www.sc-rad.com" revealed that the Respondent advertises itself
as specialising in designing and developing "unique and visually exciting
multimedia products" and websites and lists the "Town and Country
Salon" as one of its customers.
Consequently, the Panel concludes that the Respondent has no rights or legitimate
interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without
limitation, shall be evidence of the registration and use of a domain name in
bad faith. In particular, paragraph 4(b)(iv) provides as an instance of
registration and use in bad faith circumstances in which:
"by using the domain name, you [the Respondent] have intentionally attempted
to attract, for commercial gain, Internet users to your website or other on-line
location, by creating a likelihood of confusion with the complainant’s mark
as to the source, sponsorship, affiliation, or endorsement of your website or
location or of a product or service on your website or location."
The Panel finds that the Respondent could not have been unaware of the Complainant’s
famous "VOLVO" trademark which has been famous for decades throughout
the world by virtue of Complainant’s long, exclusive and ubiquitous use of it.
By creating the likelihood of confusion with the Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of its website or the location
of a product or service on its website or location the Respondent has: "capitalized
on Complainant’s marks as well as reputation by registering and using confusingly
similar domain names. According to Policy paragraph 4(b)(iv), evidence of bad
faith registration is shown when registration of a domain name occurs in order
to utilize another’s well known reputation by attracting Internet users to the
registrant’s website, for commercial gain." Dollar Rent A Car Systems
Inc v. Patrick Ory (NAF Case No. FA0209000125229). See also the decision
in GA Modefine SA v. AES Optics (WIPO
Case No. D2000-0306) for the principle that bad faith may be presumed in
the registration and use of the domain name consisting wholly or partly of the
famous trademark of a third party.
On the evidence before the Panel, the Respondent has registered the domain
name to attract Internet users to a website not associated with the Complainant’s
business, for the purpose of commercial gain. Directing unsuspecting consumers
to the Respondent’s on-line location is evidence of bad faith by creating confusion
with the Complainant’s trademark, see Snapple Beverage Corp. v. Telmex Management
Services, (WIPO Case No. D2002-0114).
The Panel therefore finds that the domain name was registered and is being
used in bad faith. The Complainant has made out each of the three elements that
it is required to prove.
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, <volvopolska.com>
be transferred to the Complainant, by BulkRegister.com, forthwith.
Derek M. Minus
Dated: October 9, 2003