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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB, Volvo Car Corporation, AB Volvo v. Khaled Malhas

Case No. D2008-1217

 

1. The Parties

The Complainant is Volvo Trademark Holding AB, Volvo Car Corporation, AB Volvo (Collectively the “Complainant”), Göteborg, Sweden, represented by Brooks Kushman, P.C., United States of America.

The Respondent is Khaled Malhas, Michigan, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <volvoblis.com> (the “Domain Name”) is registered with Melbourne IT, trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2008. On August 12, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the Domain Name. On August 13, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2008.

The Center appointed Ian Blackshaw as the sole panelist in this matter on September 24, 2008. 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 well known worldwide for its automobiles, which are known for their quality and safety. In 2007, Volvo Cars sold approximately 458,300 automobiles worldwide. A copy of an article regarding Volvo Cars’ sales in 2007 has been provided to the Panel.

Volvo Trademark Holding AB owns thousands of trademark applications and registrations for VOLVO in the United States of America (“United States”) and worldwide. The first United States Trademark Registration for VOLVO (Registration No. 636,129) was obtained on October 23, 1956. A copy of the corresponding registration certificate has been provided to the Panel. Likewise a list of worldwide applications and registrations for VOLVO and marks incorporating VOLVO has been provided to the Panel.

Volvo Car Corporation is the owner of the BLIS trademark.

Volvo Car Corporation owns United States Trademark Registration No. 2,916,145 for BLIS, registered on January 4, 2005. A copy of the corresponding registration certificate has been provided to the Panel. Likewise, a list of worldwide applications and registrations for BLIS has been provided to the Panel.

The Complainant’s rights in the above-described marks, together with their common law rights in the same, are hereinafter referred to as the “Volvo Marks.”

AB Volvo owns the domain name, <volvo.com> registered September 12, 1995, which provides links to The Volvo Group companies and Volvo Cars. A copy of the Network Solutions Whois record for <volvo.com> has been provided to the Panel.

Volvo Trademark Holding also owns the domain name <volvocars.com>, registered October 30, 1994, which provides links to each of Volvo Cars’ country-specific sites, and its international site. A copy of the MarkMonitor Whois record for <volvocars.com>has been provided to the Panel.

The VOLVO trademark is among the most well-known trademarks in the entire world. Together with its predecessors in interest and licensees, the Complainant has sold automobiles, trucks, buses, construction equipment, components for airplane and rocket engines, and many other goods and services under the world-famous VOLVO trademark since the 1920s. Beginning with production of the first vehicle in 1927, the VOLVO trademark has been continuously used in connection with the promotion, advertising, and sale of the Complainant’s products and services.

The Complainant has spent many millions of dollars and has expended significant effort in advertising, promoting, and developing the VOLVO Marks throughout the world. As a result of such advertising and expenditures, the Complainant has established immense goodwill in the VOLVO Marks.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A.1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

“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.” Volvo Trademark Holding AB v. Cosmos1, WIPO Case No. D2003-0648.

The VOLVO trademark “has become today indubitably famous and universally renowned.” Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

“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.” Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 (citing Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338); see also 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. 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. 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.

Indeed, the fame and renown of the VOLVO Mark is so well established that a recent UDRP panel stated: “It is not necessary to refer to all of [the decisions discussing the fame of the VOLVO mark], 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.” Volvo Trademark Holding AB v. Domaincar, WIPO Case No. D2006-0631 (citing Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338, as an example of an early decision, and Volvo Trademark Holding AB v. Lorna Kang, WIPO Case No. D2004-0909, as an example of a more recent decision).

The disputed Domain Name fully incorporates the Complainant’s valuable and protectable trademarks, VOLVO and BLIS, and is, therefore, identical to and confusingly similar to the Complainant’s VOLVO and BLIS trademarks.

A.2. The Respondent has no rights or legitimate interests in respect of the Domain Name

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent does not have any rights or legitimate interest in the disputed Domain Name because it is not affiliated with the Complainant and the Respondent’s use of the VOLVO Marks is unauthorized.

Upon information and belief, the Respondent, as an individual, business, or other organization, is not and has not been commonly known by the Domain Name.

Upon information and belief, the Respondent is not using and has not used, or is not demonstrating and has not demonstrated, an intent to use the Domain Name in connection with a bona fide offering of goods or services.

The Respondent registered the disputed Domain Name on January 31, 2005, long after the VOLVO trademark became world famous and after Volvo Cars commenced use of the BLIS trademark. Volvo Car Corporation registration of the BLIS trademark in the United States issued on January 4, 2005, and the Respondent registered the Domain Name on January 31, 2005.

In December of 2006, if not earlier, the disputed Domain Name led users to Drivaware, Inc.’s LaneFX website, which offers a product that competes with Volvo Car Corporation BLIS product. When visitors to the Domain Name site would select “competitive comparisons”, they would be taken to the “www.lanefx.com” site, where one of the products that could be compared was Volvo Car Corporation BLIS System. Evidence of this has been provided to the Panel.

Upon information and belief, at the time that the Respondent registered the disputed Domain Name, the Respondent had actual knowledge of the Complainant’s rights to the Volvo Marks and the “www.volvo.com” and “www.volvocars.com” websites (among others). Also upon information and belief, the Respondent registered the Domain Name to take advantage of the reputation and goodwill of the Complainant and the Volvo Marks, and the Respondent has no legitimate interest in the Domain Name.

On February 12, 2007, the Complainant sent a cease-and-desist letter by certified mail with return receipt requested to the Respondent demanding that the Respondent transfer the disputed Domain Name to the Complainant. A copy of this letter has been provided to the Panel.

In a letter dated February 15, 2007, the Respondent’s counsel indicated that the Respondent discontinued use of the Domain Name and was willing to transfer the Domain Name to the Complainant. A copy of this letter has been provided to the Panel.

On March 6, 2007, the Complainant sent a letter to the Respondent’s counsel, noting that, contrary to the February 15, 2007 claim that the Respondent discontinued use of the Domain Name, the disputed Domain Name remained in use. A copy of this letter has also been provided to the Panel.

The Complainant continued to demand transfer of the disputed Domain Name until December 2007.

The Complainant last heard from the Respondent in June 2007, and last attempted to contact the Respondent in December 2007. The Respondent’s phone number has been disconnected.

These facts demonstrate that the Respondent has no rights or legitimate interest in the disputed Domain Name under Policy, paragraph 4(a)(ii) and prevent the Respondent from demonstrating otherwise under Policy, paragraph 4(c).

A.3. The domain name was registered and is being used in bad faith

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraphs 3(b)(ix)(3))

The Respondent registered the disputed Domain Name, which is identical to and confusingly similar to the Volvo Marks, with prior knowledge of the Volvo Marks and websites. The Respondent’s knowledge of the Complainant is clear, given its references to the Complainant as described above. Such use and registration has the primary purpose and effect of disrupting the Complainant’s business and thus constitutes bad faith under the Policy, paragraph 4(b)(iii).

The Respondent’s registration and use of the disputed Domain Name meet the bad faith element set forth in the Policy, paragraph 4(b)(iv). Specifically, the Respondent used the Domain Name to intentionally attract Internet users to its website, which offered a competing product, by taking advantage of users searching for the Complainant on the Internet, creating a likelihood of confusion with the Volvo Marks as to the source, sponsorship, and endorsement of the Respondent’s website and of the products offered at that site. Use of a popular mark to host a website that has no connection with the marks at issue suggests “an attempt by the Respondent to profit from the enormous level of Internet traffic from Internet users seeking [the complainant’s official website].” Microsoft Corp. v. MindKind, WIPO Case No. D2001-0193.

Today, the Respondent makes no use of the disputed Domain Name, but merely holds it hostage without honoring its agreement to transfer the Domain Name.

Given the strength and fame of the VOLVO Marks, the Respondent’s bad faith is established by the fact of registration alone regardless of how, or whether, the disputed Domain Name has been used. The VOLVO Marks fall within a select class of internationally strong marks that have become so famous that it impossible for any respondent to claim that he was unaware of the Complainant’s prior rights or has a legitimate interest in domain names that incorporate the Volvo Marks. See, e.g. Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (ordering transfer of <volvoautomobile.com> and <volvogroup.com> and holding “VOLVO is a well-known trademark worldwide, and as such the likelihood of confusion in the public’s mind between the disputed Domain Names and Complainant’s trademark VOLVO is greater”); Volvo Trademark Holding AB v. Park, WIPO Case No. D2005-0448 (ordering transfer of my <volvo.com> and holding “the Panel agrees with Complainant’s assertion that it is inconceivable that Respondent was unaware of Complainant’s VOLVO trademark”). This argument is even stronger in the present case, because the trademark VOLVO was not merely paired with a generic term like “automobile” or “group,” but instead was paired with another trademark owned by the Complainant, namely the trademark BLIS.

Any of these circumstances, whether alone or in combination, is sufficient to justify a finding that the Respondent has acted in bad faith. See, e.g., Playboy Enters. Int’l, Inc. v. Domain Active Pty. Ltd., WIPO Case No. D2002-1156 (holding so “far as element (iii) is concerned it is sufficient that the Complaint demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the Policy applies”).

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the Domain Name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed Domain Names are 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 Domain Names; and

(iii) The disputed Domain Names have been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall 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 accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed Domain Name incorporates two of the Complainant’s trademarks, namely VOLVO and BLIS. The Panel accepts the Complainant’s contentions that these marks, especially the VOLVO mark, are widely registered and known in the United States and around the world for many years. The Panel accepts the Complainant’s claim that the VOLVO mark is a famous one.

In view of all this, the Panel finds that the disputed Domain Name registered by the Respondent is identical to the Complainant’s well-known trademarks VOLVO and BLIS, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and substantial goodwill through wide-spread promotion and commercial use around the world prior to the registration of the disputed Domain Name by the Respondent.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed Domain Name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

– whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed Domain Name. Indeed, in view of the Complainant’s widely-known trademarks VOLVO and BLIS and their extensive commercial promotion and use around the world, the Respondent must in all likelihood have known that, when registering the disputed Domain Name, the Respondent could not have – or, indeed, claimed – any such rights or interests. Indeed, as was pointed out in Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644, “it strains credibility” that the Respondent was oblivious of the existence of the Complainant’s widely known and widely-used trademarks VOLVO and BLIS when registering the disputed Domain Name. Apart from that, if the Respondent had any rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to this Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.

Nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademarks VOLVO and BLIS in the disputed Domain Name. Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s widely-known and widely-used trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services (see further on this point below) and the consequential tarnishing of the Complainant’s widely known and widely-used trademarks VOLVO and BLIS and also the valuable goodwill that the Complainant has established in these trademarks through wide-spread commercial use over many years, sufficient evidence of which has been provided to the Panel, without any apparent right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services. Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate non commercial or fair use of the disputed Domain Name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed Domain Name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 [the respondent’s] web site or location or of a product or service on its web site or location.”

Based on the record in the case, the Panel agrees with the Complainant’s contention that the Respondent, by registering and using the disputed Domain Name, is trading on the Complainant’s valuable goodwill established in its widely known and widely-used trademarks VOLVO and BLIS. In the particular circumstances of the present case, the Panel takes the view that it was unlikely that the registration and use of the disputed Domain Name by the Respondent was coincidental, but rather more likely to have been intentionally made with the Complainant’s widely-known and widely used trademarks specifically in mind.

Again, by registering and using the disputed Domain Name incorporating the Complainant’s widely-known and widely used trademarks VOLVO and BLIS, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649. Again, the inclusion of references to products on the Respondent’s website comprising the disputed Domain Name that compete with those of the Complainant constitutes bad faith.

Furthermore, the fact that the disputed Domain Name includes the widely known and widely used trademarks VOLVO and BLIS of the Complainant, registered by the Complainant before the Respondent registered the disputed Domain Name, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Under the circumstances of this case, in the Panels view, the Domain Name could only be used in good faith by the owner of the respective right or by a licensee, neither of which is the situation in the present case.

Also, the manner in which the Respondent dealt with the cease-and-desist letter sent by the Complainant and the other subsequent correspondence between the Respondent and the Complainant (as described and referred to above by the Complainant), evidence of which has been produced to the Panel, and, in particular, the failure of the Respondent to keep his promise to transfer and discontinue the use of the disputed Domain Name to the Complainant (also as noted above) are, in the view of the Panel, further indications of bad faith on the part of the Respondent.

Finally, the failure of the Respondent to answer the Complainant’s Complaint or take any other part in the present proceedings is, again in the view of the Panel, a further indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed Domain Name in bad faith.

 

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 <volvoblis.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Date: October 6, 2008

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2008/d2008-1217.html

 

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