WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding Aktiebolag v. xiao rueitao

Case No. D2021-0665

1. The Parties

The Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by Zacco Sweden AB, Sweden.

The Respondent is xiao rueitao, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <volvo-ce.com> (the “Disputed Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2021, 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 10, 2021 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 on March 10, 2021.

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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2021.

The Center appointed Kar Liang Soh as the sole panelist in this matter on April 27, 2021. 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 trademark holding company owned by AB Volvo and Volvo Car Corporation and forms part of the Volvo group of companies (the “Volvo Group”). The Complainant is the registered proprietor of trademarks incorporating the word “volvo” (the “VOLVO Marks”) around the world and licenses the use of these trademarks to companies of the Volvo Group.

In 1950, the Volvo Group acquired a business in Eskilstuna, Sweden with a history of over 100 years. This acquisition eventually grew to become Volvo Construction Equipment, a leading manufacturer of excavation equipment, road development machines and compact construction equipment. Volvo Construction Equipment operates online under the domain name <volvoce.com>.

Companies in the Volvo Group also hold various other domain name registrations incorporating the VOLVO Marks, e.g., <volvo.com>, <volvo.cn>, <volvogroup.com>, <volvocars.com>, and <volvotrucks.com>. The Volvo Group operates a website at “www.volvo.com” which promotes construction equipment among others.

The VOLVO Marks are registered in many jurisdictions including China and Hong Kong, China, for example:

The VOLVO Marks have been used by the Volvo Group in relation to products and services such as cars, trucks, buses, construction equipment, marine engines and industrial power systems for over 90 years. Sales of cars under the VOLVO Marks in 2019 in China alone exceeded 161,000 units. The recognition of the VOLVO Marks is well regarded in various global rankings and surveys, including Brand Finance Brandirectory in 2019. Various past UDRP panels have also recognized the VOLVO Marks to be well-known (e.g., Volvo Trademark Holding Aktiebolag v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2020-1070; Volvo Trademark Holding AB v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Handler, Metro Concourse Limited, WIPO Case No. D2014-1752; Volvo Trademark Holding AB v. Wang Songxu, WIPO Case No. D2013-0355).

Not much is known of the Respondent beyond the WhoIs information and Registrar verification provided in this proceeding. The Respondent appears to be a resident of Hong Kong, China.

The Disputed Domain Name was registered on January 25, 2021. As of January 27, 2021, the Disputed Domain Name resolved to a website containing pornographic and gambling online content. The website also contained promotion for mobile apps to be downloaded in exchange for cash benefits. On February 2, 2021, the Complainant issued a letter of complaint to the hosting provider requesting a takedown of the website. By February 26, 2021, the Disputed Domain Name no longer resolved to a website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The Disputed Domain Name is identical or confusingly similar to the trademark VOLVO in which the Complainant has rights. The trademark VOLVO is included in its entirety in the Disputed Domain Name with the addition of the letters “ce”. The letters “ce” obviously refers to the Volvo Construction Equipment business;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no information that the Respondent is trading under a name corresponding to the Disputed Domain Name and cannot claim to be commonly known by the Disputed Domain Name. No license or authorization of any kind has been given by the Complainant to the Respondent to use the VOLVO Marks. The Respondent has never had a business relationship with the Complainant. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The website resolved from the Disputed Domain Name displayed pornographic content. It is thus clear that the Disputed Domain Name is being used for commercial purpose which will clearly risk tarnishing and damaging the Volvo brand; and

c) The Disputed Domain Name was registered and is being used in bad faith. The trademark VOLVO has the status of a prominent trademark within but not limited to China. The trademark registrations for the VOLVO Marks in China and Hong Kong, China pre-date the registration of the Disputed Domain Name by decades. The Respondent was motivated by the fame and value of the VOLVO Marks to register the Disputed Domain Name including a well-known trademark of the Complainant. The Respondent was fully aware of the Complainant and the VOLVO Marks at the time of registering the Disputed Domain Name. The Respondent chose the Disputed Domain Name in light of its similarities with the domain names held by the Volvo Group. The Respondent by using the Disputed Domain Name has intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the VOLVO Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the trademark registrations tendered in the evidence, the Panel is satisfied that the Complainant owns rights in the VOLVO Marks. The Disputed Domain Name obviously incorporates the trademark VOLVO in its entirety. The Panel is of the view that despite the addition of the suffix “-ce” in the Disputed Domain Name, the word “volvo” remains highly recognizable. The consensus established by past UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.11) is that the generic Top-Level Domain (“gTLD”) should be disregarded when comparing a domain name and a trademark. The Panel respectfully adopts this view. In view of the foregoing, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark VOLVO thereby establishing the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

There is no evidence before the Panel to suggest that the Respondent is known by the Disputed Domain Name. The Complainant has asserted that the Respondent has no business relationship with the Complainant and is neither authorized nor licensed by the Complainant to use the VOLVO Marks in the Disputed Domain Name. There is also no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain nor is the Respondent using the Disputed Domain Name for a bona fide offering of goods or services. Rather the Disputed Domain Name was being used to direct Internet users to a website promoting pornographic and online gambling content with clear intentions for commercial gain. The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name which has not been rebutted. The second limb of paragraph 4(a) of the Policy is accordingly established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out non-exhaustive circumstances of bad faith registration and use of a domain name. In particular, paragraph 4(b)(iv) of the Policy provides as follows:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Based on the evidence submitted, the Panel accepts that the trademark VOLVO is well known. It is inconceivable that the Respondent was unaware of the Complainant’s decades old trademark rights in the VOLVO trademark at the time of registering the Disputed Domain Name. The Disputed Domain Name was obviously being deployed for the purpose of directing traffic to the Respondent’s website with a patent intent for commercial gain by creating a likelihood of confusion with the trademark VOLVO as to source, sponsorship, affiliation, or endorsement within the meaning of paragraph 4(b)(iv).

The circumstances are further aggravated by the nefarious association of pornographic content to the well-known trademark of the Complainant on the website resolving from the Disputed Domain Name. Numerous UDRP panels have not hesitated to hold that pornographic content on a respondent’s website is sufficient to establish bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy (see VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631).

By reason of the above, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith, thereby establishing the third limb of paragraph 4(a) of the Policy.

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 <volvo-ce.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: May 11, 2021