The Complainant is Volvo Trademark Holding AB of Gothenburg, Sweden, represented by Wallberg IP Advice, Denmark.
The Respondent is James H Park of GimHae-Shi, Republic of Korea.
The disputed domain name <carebyvolvo.com> is registered with DropCatch.com 870 LLC. The disputed domain name <volvoclassic.com> is registered with DropCatch.com 568 LLC. The disputed domain name <volvoclub.net> is registered with DropCatch.com 545 LLC. The disputed domain name <volvox.net> is registered with DropCatch.com 571 LLC. The disputed domain names will collectively be hereinafter referred to as the “disputed domain names”. The Registrars will collectively be hereinafter referred to as the “Registrars”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 6, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On the same date, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2018.
The Center appointed Peter Burgstaller as the sole panelist in this matter on July 24, 2018. 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 the owner of the well-known and famous trademark VOLVO, for which it has various registrations in numerous jurisdictions internationally, including a trademark registration in the Republic of Korea (Annex 4 and 6) since years.
Several UDRP panels previously have already accepted that the VOLVO trademark is famous throughout the world, see e.g., Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338; Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. DNU2001-0001; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292; Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Volvo Trademark Holding AB v. Kyung Won Yang, Case No. D2011‑0178; Volvo Trademark Holding AB, Volvo Car Corporation en Volvo Car Nederland B.V. v. Puch Tomos Service Nederland (t.h.o.d.n. Used Volvo Van Kempen), Zaaknr, DNL2016-0030, among others.
Respondent registered the disputed domain names between February 2017 and January 2018 without having permission to use the Complainant’s trademarks in any manner, including in domain names.
The disputed domain names resolve to standard PPC sites hosted by Sedo, just as all the domain names are offered for sale on “www.sedo.com” for EUR 4,500, USD 3,500, USD 2,800 and USD 2,500 respectively (Annex 5).
The Complainant is the proprietor of the distinctive and well-known VOLVO trademarks throughout the world (see Annex 4) and licenses the rights to use these trademarks to AB Volvo and Volvo Car Corporation in connection with their respective businesses. The VOLVO trademark as such has been used intensively for more than 80 years for a wide variety of products and services such as cars, trucks, buses, construction equipment, marine engines, and industrial power systems, and have through this use acquired a global reputation for products and services of high quality and safety.
The Complainant claims that the disputed domain names <carebyvolvo.com>, <volvoclassic.com>, <volvoclub.net> and <volvox.net>are confusingly similar to the VOLVO trademark in which the Complainant has rights. The trademark VOLVO is included in its entirety in all the disputed domain names, which in addition contain the generic terms “care by” as prefix and “classic”, “club” and “x” as suffixes respectively.
The Respondent has not received any license from the Complainant to register and use a domain name that incorporates the VOLVO trademark nor has the Respondent received any other explicit or tacit authorization from the Complainant to register and use the disputed domain names. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the domain names. The Respondent did thus not use the domain names as trademark, company name, business or trade name prior to the registration of the disputed domain names, nor is the Respondent otherwise commonly known in reference to the domain names.
The Complainant claims that because of the distinctive nature and intensive use of the Complainant´s trademark VOLVO, the Respondent had positive knowledge as to the existence of the Complainant’s trademarks at the time the Respondent registered the disputed domain names; the Complainant moreover holds relevant trademark registrations in the country of residence of the Respondent (Annex 6). The Respondent uses the disputed domain names to divert Internet traffic to websites that contain various advertising links including links to websites that may offer products and services in competition with those of the Complainant. By doing this the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of the Respondent’s website which is a clear indication of bad faith use.
Furthermore, the disputed domain names are all explicitly offered for sale on “www.sedo.com”, and the Complainant claims that the Respondent has registered the disputed domain names primarily for the purpose of selling it to the Complainant who is the owner of the VOLVO trademark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names, which is the evidence of the Respondent’s registration and use of the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that
(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 with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The disputed domain names are confusingly similar to the Complainant’s trademark VOLVO since where the relevant trademark is recognizable within the disputed domain names the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
It has also long been held that suffixes such as a country code or generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark VOLVO in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
As stated in many decisions rendered under the Policy (see Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, are cumulative; consequently, the Complainant must show that:
- the disputed domain names were registered by the Respondent in bad faith, and
- the disputed domain names are being used by the Respondent in bad faith.
It is the Panel’s conviction that the fame of the VOLVO trademarks makes it inconceivable that the Respondent registered or has used the disputed domain names without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith.
Paragraph 4 (b) of the Policy moreover provides: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or […]
(iv) 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.”
The screen shots annexed to the Complaint (Annex 5) states that the disputed domain names may be for sale by its owner and the invitation “BUY THIS DOMAIN” are circumstances indicating that the Respondent has registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of its documented out‑of‑pocket costs directly related to the domain names. In fact, the disputed domain names resolve to standard PPC sites hosted by Sedo where the domain names are offered for sale for EUR 4,500 (<carebyvolvo.com>), USD 3,500 (<volvoclassic.com>), USD 2,800 (<volvoclub.net>) and USD 2,500 (<volvox.net) respectively (Annex 5).
The Respondent’s use of words such as “classic” and “club” in connection with the famous mark VOLVO creates likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the disputed domain names, and “free ride” on the reputation of the Complainant’s VOLVO trademark.
In the Panel’s view, based on the evidence of record, on balance, the above constitute evidence of the registration and use of the domain names in bad faith for the purpose of paragraph 4(b) of the Policy.
Taking all these facts and evidence into consideration the Panel finds that the disputed domain names have been registered and are being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 names <carebyvolvo.com>, <volvoclassic.com>, <volvoclub.net> and <volvox.net> be transferred to the Complainant.
Peter Burgstaller
Sole Panelist
Date: August 7, 2018