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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Lorna Kang

Case No. D2004-0909

 

1. The Parties

The Complainant is Volvo Trademark Holding AB, Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.

The Respondent is Lorna Kang, Telok Ihtan, Perak, Malaysia.

 

2. The Domain Name and Registrar

The disputed domain name <wwwvolvo.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 2, 2004. On November 2, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On November 4, 2004, iHoldings.com Inc. d/b/a DotRegister.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 November 5, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2004.

The Center appointed The Honourable Neil Anthony Brown QC as the Sole Panelist in this matter on December 3, 2004. 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 a company which owns the VOLVO trademark throughout the world and licenses it to AB Volvo and VOLVO Car Corporation for use in their respective businesses. Each of those companies own 50% of Volvo Trademark Holding AB. The Complainant’s predecessor was founded in 1915 as a subsidiary of AB SKF, a Swedish ball bearing manufacturer. The VOLVO companies began making motorcars in 1927, and since then the business has been expanded to include trucks, buses and bus chassis, marine engines, construction equipment, airplane components and rocket engines, as well as other goods and services.

These products have been made and sold under the VOLVO trademark for many decades and it is registered throughout the world both as a trademark and as a service mark. The Complainant has exhibited to its Complainant a list of trademark registrations for the mark VOLVO and also the US registrations and printouts from the US patent and Trademark Office’s assignment database system showing title in the Complainant to the trademark.

But the evidence and the known facts go much further than that, for it must also be accepted that the VOLVO mark is not only a famous trademark in every sense of the word, but that it is one of the most widely known marks in the world, has been accepted as such for many years and is synonymous with quality, precision, reliability, value and safety.

The Complainant also uses its trademark and trade name on the Internet. It has a domain which is <volvo.com> which hosts its main website which in turn makes extensive use of the Volvo name.

On November 13, 2001, the Respondent registered the domain name <wwwvolvo.com>.

When the domain name <wwwvolvo.com> is put into the Internet, either by accidentally typing that name instead of “www.volvo.com”, or even intentionally, access is obtained not to an official VOLVO website but to “www.onebox.com”. That is a website that urges and enables the user to obtain a quote on the price of new cars, including but not limited to VOLVOS. Presumably, this process has been technically engineered by the Respondent or someone on its behalf so that typing the address ‘wwwvolvo.com’ directs the user automatically to the ‘onebox’ site. The commercial part of the structure no doubt comes about as the site also announces that the quote will be provided by ‘a pre-approved local dealer’. The factual inference would have to be drawn that the process just described has been created so that people interested in buying a Volvo might accidentally find themselves in the ‘onebox’site and buy their Volvo or at least get a quote on one or even on a different brand of vehicle by dealing through that site rather than through VOLVO or its authorised agents.

This factual background has given rise to the present dispute, for the Complainant alleges that the Respondent’s use of its name in this manner is a deliberately improper act, done without authorisation and damaging to its business and reputation. Accordingly, the Complainant requests that, pursuant to Paragraph 4(b)(i) of the Policy, the Panel issue an order transforming the domain name to the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant has assisted the Panel by making a detailed Complaint, replete with factual material and many references to decided UDRP cases in situations analogous to the present case.

It says that the foundation of its case is that the VOLVO mark and name are famous. It seeks to establish this by historical evidence and the contents of its exhibits annexed to its Complainant dealing with the registration of its trade and service marks throughout the world.

The Complainant also says that this fame and universal respect are underlined by many decisions in this tribunal that are set out in the Complaint.

Building on its famous mark, it then proceeds to argue that the facts that are known and the inferences to be drawn from them and which have already been set out, make out a case under Paragraph 4(a) of the Policy. It argues that, within the meaning of those provisions, the Respondent’s domain name is identical or confusingly similar to the Complainant’s trademark or service mark, that the Respondent has no rights or legitimate interests in respect of the domain name and that the name has been registered and is being used in bad faith.

The Complainant illustrates its points by reference to the decided cases which deal with similar facts and which in some cases deal specifically with the VOLVO mark and even with similar disputes involving the Respondent.

So, not only are there a large number of cases which provide guidance to the Panel, but the Panel is additionally assisted by seeing how the panels in those other cases have responded to the improper use of the VOLVO mark and how they have interpreted the conduct of the Respondent on earlier occasions.

On the basis of all of that material, the Complainant says that the only way to stop the improper use of its name by the Respondent in the manner that has been described, is to order the transfer of the domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy that:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

It is to be noted that Paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel accepts the argument of the Complainant that it owns a famous mark. That case has been made out because of the historical evidence and the material in Exhibits A and B to the Complainant which show the registration of the VOLVO mark in the United States of America and throughout the world in connection with a wide range of vehicles, equipment and other goods and services. That material also shows that title to the trademark is held by the Complainant.

The Complainant also relies on several UDRP cases in this tribunal where the VOLVO mark has been held to be famous. The Panel would be influenced by decisions of respected panelists on such matters, but it is especially so in this case for the decisions referred to are based on the accumulated evidence revealed and used in each of those cases. The totality of the decisions is therefore a very substantial repository of evidence and when it is all consistent, as it is, it leads inexorably to the conclusion that the recognition of the fame of the mark has a very firm foundation.

It is not necessary to refer to all of those decisions, but the Panel will refer to one of the earliest and one of the latest, to show the continuity of the findings and the consistency of the evidence.

The former is Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338. In that case, the Panel said:

“The Panel is satisfied that the domain name <volvooceanrace.com> is confusingly similar to the registered trademark “VOLVO” which falls into the category of a “famous mark” as one of the best known automobile and vehicles trademarks in the world.”

It is clear that that decision and those words just quoted are relevant for other aspects of the present case, but the Panel cites it here as a recognition of the fame of the name and the universal respect in which it is held.

The later case is Volvo Trademark Holding AB v. Enterprise ReVolvo, WIPO Case No. D2004-0086, where the Panel held:

“The Complainant has established its rights in the famous trademark VOLVO and that said domain name in dispute is confusingly similar to the Complainant’s said trademark.”

Again, this is due recognition of the famous mark.

The Complainant then contends that the contentious domain name, <wwwvolvo.com> is identical to and confusingly similar to its trademark and the trade name VOLVO. It also says that the domain name is “practically identical to and is confusingly similar to” its own domain name.

What has to be proved is that the contentious domain name is identical to or confusingly similar to the trademark or service mark.

The Panel finds that the domain name is confusingly similar to the trademark and the service mark. That is so because, first, the entire the trademark is contained in the contentious domain name and constitutes most of it. The domain name is therfore visually similar to the trademark. That similarity inevitably gives rise to confusion.

The prefix of the letters “www” does not detract in the slightest from the impression given to the reader and the viewer that the dominant word in the domain name is “volvo”.

Secondly, this is clearly one of those cases where the addition of letters or even a word does not remove, detract from or diminish the confusion that comes from using another’s name, but actually increases it. There seems to be a view in some quarters that a finding of confusion can be avoided by adding letters or an entire word to a trade name, as if to hide or camouflage it.

The protagonists of this view overlook the fact that when the reader or viewer sees this being done, it immediately creates confusion in the mind as to whether the resulting word is the genuine article or not.

This is particularly so in the present case where the letters “www” have undoubtedly been added because they stand for “world wide web” and it is hoped to make some people believe that this is the genuine world wide web address of Volvo. The addition of those letters before the Complainant’s trademark has therefore not reduced the confusion one iota, but has increased it.

This situation is similar to that in HRB Royalty, Inc. v. Pro-Life Domains Inc. WIPO Case No. D2003-1021. There, the registrant had merely taken the name of the well known firm of accountants H & R Block, removed the ampersand and added the acronym “www” to create the domain name <wwwhrblock.com>. The Panel had no difficulty in coming to the conclusion that the domain name thus created was confusingly similar to the H & R Block name and mark and that the confusion had actually been caused by the artificial device adopted to create the name.

There are, of course, other cases to the same effect, which the Complainant has included in its submission. The proposition that adding “www” to a famous mark creates a confusingly similar domain name is now so well supported that it is not necessary to deal with those cases in detail.

It is, however, worth noting that there are cases where it has been the Volvo name itself that has been tampered with and where it has been expressly held that such conduct has created a confusing similarity to the trade or service mark.

Thus, it was held in Volvo Trademark Holding AB v. Nick Bauer, WIPO Case No. D2002-1025 that to embrace the word Volvo on one side with “new” and on the other side with “parts”, gives a domain name of <newvolvoparts.com>, which is confusingly similar to “Volvo” itself, for it gives the illusion that the domain name will lead to the genuine Volvo spare parts website.

I have no hesitation in concluding that <wwwvolvo.com> is visually similar to VOLVO and confusingly so and that as a consequence the contentious domain name is confusingly similar to the Complainant’s mark within the meaning of Paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel also finds that the Respondent has no rights or legitimate interests in the domain name <wwwvolvo.com>. That is so for the following reasons. First, the Respondent could not have any rights or legitimate interests in a domain name bearing the VOLVO name when it had constructive notice of the Complainant’s trademark rights to that name and when it must have been aware of such a famous mark and name.

It must also have been aware that this famous trademark was owned by the Complainant or another Volvo company. It certainly knew that it, the Respondent, had no permission to use the name.

Secondly, on the evidence, the Respondent cannot not bring itself within any of the provisions of Paragraph 4(c) of the Policy, any one of which might have shown that it had rights or legitimate interests in the domain name. Thus, the very use of the Complainant’s name without permission means that the Respondent’s offering of goods and services cannot be bona fide, the Respondent has never been known by the domain name itself and the domain name resolves to a different but a commercial site, “www.ownbox.com”, which shows that the Respondent is not making a legitimate, noncommercial or fair use of the name, but rather an illegitimate, commercial and unfair use of it.

Indeed it is very apparent that the whole motivation for the Respondent’s activities is commercial gain, intended to be accomplished by diverting customers in a misleading manner and by tarnishing the VOLVO trade and service marks. These are the very things the Policy aims against and, when they are so clearly demonstrated, they show that the Respondent has no rights or legitimate interests in the domain name.

Thirdly, if there were an innocent or legitimate explanation for the conduct of the Respondent, it could have provided it. In the absence of such an explanation, as the Administrative Panel observed in Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273, the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that “ any evidence of the Respondent would not have been in his favour”. The Panel draws such an adverse inference in this case.

Fourthly, the Panel refers again to the fact that use of the domain name resolves to the website at “www.ownbox.com” which reveals a lot about the true nature and substance of the Respondent’s activities. The Complainant has shown by the excerpts reproduced in Exhibit D to its Complaint that the website is designed to allow a user to obtain a quote on the price of new cars, both VOLVOS and other brands. This shows the illegitimate nature of the whole activity. The Respondent is not an agent for VOLVO products and has no permission to give prices on new VOLVO vehicles or use the VOLVO name in any of its activities. At the same time, the domain name is clearly intended to lure potential buyers of VOLVOS into the Ownbox website to arouse their interest in brands other than VOLVO. Both objectives are illegitimate, for they are sought to be achieved by the colourable device of taking the VOLVO name without permission and using it to concoct a domain name that could be mistaken for the genuine VOLVO name.

Accordingly, for these reasons, the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

With respect to this third element, the Policy provides a detailed guide to those circumstances that are evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) sets out several alternative circumstances, any one of which, if found to be present, is evidence of the registration and use of a domain name in bad faith. However, the Policy goes further and makes it plain that regard may also be had to circumstances other than those specified in the course of deciding if bad faith is present.

The Panel finds that the Respondent registered and used the domain name in bad faith.

The Respondent registered the domain name in bad faith as it clearly had constructive knowledge of the fame and immense value of the VOLVO name and believed that by so registering the domain name and infringing the VOLVO trademark in the process, it could attract consumers to its website and earn money. The available evidence admits of no other conclusion. Moreover, there is no legitimate explanation for that conduct and in the absence of such a legitimate explanation, the conclusion must have been effected for some ulterior motive and hence in bad faith.

The Respondent is also currently using the domain name in bad faith.

To establish this aspect, the Complainant relies specifically on two of the specified grounds of bad faith, namely Paragraph 4(b)(ii) and (iv) and also on more general, but nevertheless very substantial, evidence of bad faith derived from the known character, record and modus operandi of the Respondent in this and other cases.

The Panel takes the view that it is not necessary to go into detail about the precise ambit of the grounds specified in Paragraph 4, although it is clear that the Respondent used the domain name to attract users by creating confusion with the Complainant’s mark, at least as to “the source, sponsorship, affiliation, or endorsement” of the website and the services on it. Accordingly, that brings the situation within Paragraph 4(b)(iv) of the Policy and is sufficient evidence of bad faith without more.

Moreover, as the Panel has noted above, the substance of what has been done by the Respondent is to link the contentious domain name to another and entirely different site, so the whole use of the domain name<wwwvolvo.com> is a subterfuge from the beginning. That view is supported by the decision in Wells Fargo & Co. v. Azra Khan, NAF Case No. FAO2100135009, where it was held that linking the unauthorized domain name <wellsfargo.com> to <onebox.com> constituted bad faith, because it showed that the Respondent was “intentionally trying to attract Internet consumers to its website for commercial gain by deliberately creating a likelihood of confusion between Respondent’s domain name and Complainant’s mark”. Those observations are clearly applicable to the present case.

In addition, the Complainant asserts that the Respondent is ‘a renowned cybersquatter and typosquatter’ and cites several WIPO decisions in which the Respondent was involved to prove this point. It is not necessary to refer to or discuss all of these cases, but it is appropriate to refer to one of them, being the most recent. That decision is Dr. Ing. h.c.F. Porsche AG v. Lorna King, WIPO Case No. D2004-0331. In that case, the Respondent had registered the domain name <porscheusa.com>, a transparent devise to give the impression that it led to an official Porsche site for the United States of America, whereas in reality and as in the present case, it led to “www.onebox.com” where price quotes for new cars may be obtained. The Administrative Panel found that this conduct amounted to bad faith In the course of its analysis it drew attention to the established fact that the Respondent was a “prolific cyber squatter” and that:

“more than 15 cases had already been lodged against it and they all had resulted in the transfer of the domain names involved.”

This comes very close to the clear intention and effect of the Respondent’s conduct in the present case. What it has done is to concoct the name <wwwvolvo.com>, hoping and waiting for people who want to use the legitimate VOLVO site to make a mistake and type the letters “wwwvolvo.com” instead of “www.volvo.com”. Those who make that mistake are then instantly swept into the Respondent’s own site, where it is hoped they will stay while they use the services of the Respondent’s associates and buy or get a quote on a VOLVO or another brand of vehicle, for which the Respondent will no doubt be paid. So the Panel finds that the essential elements of the Respondent’s conduct are an illegal use of the VOLVO name, a trap set for innocent people who make a human mistake, a deceitful means of ensnaring customers and a motivation which is exclusively financial.

That is clearly bad faith. Regrettably, the case seems to one in a long line of analogous transgressions where well-known trade and service marks have been infringed and illegitimately used by the Respondent to create bogus domain names for profit.

The Complainant also cites in Exhibit E to its Complaint several similar cases decided in the National Arbitration Forum and in those cases, likewise, the domain names were transferred to the Complainants for similar reasons.

Furthermore, it appears from Yahoo! Inc and HotJobs.com Ltd v. Alex Vorot, NAF Case No. FA0305000159547 that the Respondent operates under multiple aliases and that it had registered 18 domain names that were the subject of that proceeding.

When a criterion such a “ bad faith” is used, the Panel must have the discretion to take into account a broad range of matters and it is therefore relevant to take into account the facts just dealt with, going to the nature of the Respondent’s character and behaviour and the general modus operandi it has adopted to ply its trade. When that is done, the Panel has no hesitation in concluding that they constitute bad faith in the use of the domain name.

Finally, the Complainant makes the valid point, which the Panel accepts, that if the Respondent is not stopped, the public will be confused into believing that the Complainant acquiesces in the infringement of its trademark, which will cause great damage to its mark and the valuable asset that it is.

The conclusion of the Panel is therefore that the domain name has been both registered and used in bad faith.

The Complainant has therefore proved that each of the three elements specified in Paragraph 4(a) of the Policy is present.

 

7. Decision

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, <wwwvolvo.com> be transferred to the Complainant.


The Honourable Neil Anthony Brown, QC
Sole Panelist

Dated: December 16, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0909.html

 

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