The Complainant is Volvo Trademark Holding AB of Goteborg, Sweden represented by Sughrue Mion, PLLC of Washington, United States of America.
The Respondent is Jose Puig of California, United States of America.
The disputed domain names (the "Domain Names") are <volvoalternator.com>; <volvobattery.com> and <volvostarter.com> and are registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. On March 10, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Names. On March 10, 2011, Melbourne IT Ltd. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2011.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 15, 2011. 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 Complainant is part of the group of companies that manufacture and sell Volvo motor cars, trucks, engines and related products and equipment. It is the proprietor of numerous registered trade marks in respect of the word “volvo”. It licenses the use of the VOLVO trade mark to various members of the Volvo group of companies. The group as a whole through various subsidiary operating companies, manufacture and markets the Volvo range of products
The filed evidence establishes beyond dispute that:
1. The Complainant and its associated companies are engaged in business under and by reference to the word "Volvo" on a very substantial international scale.
2. The Complainant owns numerous registered trade marks in respect of the word "Volvo".
3. The word "Volvo" is extremely well known and highly distinctive of the products of the Complainant and its associated companies.
The Domain Names were registered in February and March 2010. The Complainant asserts that the Domain Names resolve to a web site, “www.voltecbattery.com” which offers for sale batteries, starters and alternators which are supplied by competitors of the Complainant's group of companies.
The main points made by the Complainant can be summarized as follows:
Each of the Domain Names combines the Complainant's well known and highly distinctive VOLVO trademark with a generic term for car parts. Each of the Domain Names is accordingly confusingly similar to the Complainant's trade mark.
The Respondent is using the Domain Names to offer goods or services which compete with those of the Complainant's group of companies.
The Respondent has no rights or legitimate interests to use the Domain Names and registered in bad faith with a view to attracting customers which was drawn by the confusing similarity of the Domain Names. It has subsequently used the Domain Names in such a manner.
The Complainant also relies on a very large number (approximately 30) previous UDRP decisions which it has successfully brought in order to protect its rights in the name "Volvo". It says the reasoning of the respective panels in such cases is directly applicable to the present case.
The Respondent did not reply to the Complainant’s contentions.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Names are identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) The Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the trade mark VOLVO. It is undisputedly a well-known and distinctive trade mark and the Complainant owns numerous registrations for the trademark in many jurisdictions around the world.
The Domain Names are confusingly similar to the VOLVO trade mark. Each of the Domain Names combines the Volvo trade mark with a generic term for parts of a car (ie “alternator”, “battery” and “starter”). UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of generic terms (such as here "battery" and "alternator" and "starter") to the Domain Names have little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Domain Names are confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Names. None of these apply to the present case. The services the Respondent offers via its web site include the offer to supply replacement parts for a wide range of cars (including those of the Complainant's group) and clearly include aftermarket parts not supplied by the relevant original manufacturer. The Complainant's evidence establishes the Respondent is not licensed or otherwise authorized to use the Complainant's trademark. Absent any explanation from the Respondent the Panel is unable to conceive of any other basis upon which the Respondent would be able to show it had rights or legitimate interests in the word "Volvo" in combination with generic terms.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.
The second condition of paragraph 4 (a) of the Policy has been fulfilled.
Under paragraph 4(b)(iv) of the Policy evidence of bad faith is established if "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".
It is quite clear to the Panel that the Domain Names were registered with the intention of using the well- known trade mark of the Complainant to attract users to a web site which offered competing products and services. The Domain Names were then used in such a manner. The way in which the Domain Names involve the combination of the Complainant's trade mark with a generic term is clearly like to lead to persons searching for genuine Volvo parts of the type in question being directed to the Respondent's web site.
Accordingly the Panel finds that the Domain Names have been registered and used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
In reaching this conclusion the Panel's view is reinforced by similar UDRP decisions reached by numerous previous Panels on similar cases involving the Complainant and its VOLVO trademark. In particular Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (volvoexhausts.com) and Volvo Trademark Holding AB v. Franks Foreign Auto, WIPO Case No. D2004-0315 (volvolamps.com) involve precisely similar considerations where the Complainant's trademark has been combined with a generic term for car parts.
In view of the Panel's finding it is not necessary for the Panel to consider further other matters the Complainant refers to as indicating bad faith on the part of the Respondent, such as how the Respondent altered the content of its web site following receipt of a cease and desist letter, or the nature of other domain names which also resolve to the Respondent's web site.
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 Names <volvoalternator.com>, volvobattery.com and <volvostarter.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Dated: April 19, 2011