WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Shimon Shapiro
Case No. D2019-1011
1. The Parties
The Complainant is Volvo Trademark Holding AB of Sweden, represented by Zacco Denmark A/S, Denmark.
The Respondent is Shimon Shapiro of United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <worldofvolvo.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2019, 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 May 8, 2019 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 amended Complaint on May 10, 2019.
The Center verified that the Complaint together with the amended 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 May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any formal response. However, on May 14, 2019 and May 31, 2019 the Respondent sent two email communications.
The Center notified the Respondent’s about the commencement of Panel Appointment Process on June 6, 2019.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on June 7, 2019. 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 Swedish company, jointly and equally owned by AB Volvo and Volvo Car Corporation. These companies form a leading automobile manufacture group, which produces cars, trucks, buses, construction equipment, marine engines as well as industrial power systems, and provides related financial and insurance services, all identified by the mark VOLVO that has been intensively used for more than 90 years worldwide.
The Complainant holds an extensive trademark portfolio for the mark VOLVO in many jurisdictions, of which the following are sufficiently representative for the present proceeding:
European Union Trademark No. 2361087 VOLVO, word mark, registered June 20, 2005, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 33, 34, 35, 36, 37, 38, 39, 40, 41, and 42;
European Union Trademark No. 2347193 VOLVO, word mark, registered January 28, 2003, in classes 35, 36, and 39;
United States Trademark No. 3207372 VOLVO, word mark, registered February 13, 2007, in classes 1, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 44, and 45;
United States Trademark No. 636129 VOLVO, word mark, registered October 23, 1956, in class 12;
Great Britain Trademark No. 747362 VOLVO, word mark, registered October 26, 1955, in class 12;
The Complainant’s group further owns a domain name portfolio comprising the mark VOLVO, including <volvo.com>, registered on September 12, 1995, which is linked to its corporate website in connection with its products and services, as well as <volvogroup.com>, registered on January 24, 2004, <volvocars.com>, registered on October 31, 1994, and <volvotrucks.com>, registered on July 28, 1997.
The disputed domain name was registered on December 29, 2014. It resolves to a parking website hosted by Sedo, which lists various links to third parties’ websites that change regularly related to different sectors, including automobile and machinery resale, as well as financial services related to the automobile industry.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
Through its intensive use over more than 90 years worldwide, the trademark VOLVO has acquired a global reputation for products and services of high quality and safety, as recognized in several previous UDRP decisions.
The disputed domain name incorporates the trademark VOLVO in its entirety adding the generic terms “world of” as prefix. It is a well-established practice under the Policy that a domain name that consists of a combination of a well-known trademark and a descriptive term shall be considered as being confusingly similar to that trademark. Further, it is also a well-established practice under the Policy that the applicable generic Top Level Domain (“gTLD”), in the present case “.com”, is usually disregarded under the confusing similarity test.
The Respondent is not commonly known by the disputed domain name, nor does it hold and/or use any trademark, company name, business or trade name, prior to the registration of the disputed domain name, containing or consisting of the terms included in the disputed domain name. Further, the Respondent has not received any license or any other explicit or tacit authorization to register or use the disputed domain name and it is not making legitimate noncommercial or fair use of the same. The disputed domain name resolves to a holding page hosted by Sedo including pay-per-click links that change regularly. Some of the linked third parties’ websites relate to products or services also offered by the Complainant’s group under the mark VOLVO, like car insurance (CAR INSURANCE) and vehicles (CATERPILLAR and SCANIA). Consequently, it is evident that the Respondent has no rights or legitimate interests and does not make legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Due to the intensive use and well-known character of the VOLVO trademark, the Respondent had positive knowledge of its existence at the time of the disputed domain name’s registration. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website linked to the disputed domain name by creating a likelihood of confusion with the Complainant or its trademark.
The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.
Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties.
A. Identical or Confusingly Similar
Regarding the confusing similarity test, it is important to note that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered mark VOLVO. The disputed domain name incorporates the mark VOLVO in its entirety with the addition of the terms “world of”, which does not avoid the direct perception of the mark. The Complainant’s mark VOLVO is directly recognizable in the disputed domain name, and the gTLD (“.com”) is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within Respondent´s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant has alleged that the Respondent is not commonly known by the disputed domain name. Furthermore, the Complainant has asserted that the Respondent has not been authorized to use the trademark VOLVO, not having any Intellectual Property right over this term, and that there is no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. On the contrary, the disputed domain name is used in connection to a holding page hosted by Sedo, which includes various pay-per-click links that change regularly, some of them related to the same Complainant’s business, competing with the products and services offered by the Complainant’s group under the mark VOLVO.
This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In various email communications to the Center and to the Complainant, the Respondent did not provide any explanation connected to the above-mentioned circumstances or any other that may be considered as a fair use or legitimate interests in the disputed domain name. On the contrary, the Respondent deliberately chose not to reply to the Complaint, simply offering to settle the conflict by selling the disputed domain name to the Complainant.
It is further to be noted that a core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding the terms “world of” before the mark. The Panel considers that the additional terms (“world of”) reinforce the association with the targeted trademark, attributing the disputed domain name a certain affiliation to this mark as a place or site for getting information and/or acquiring VOLVO various range of products and services, giving the impression of being an official dealer, distributor or otherwise authorized by the Complainant. Therefore, the Panel considers that there is a high risk of implied affiliation.
The Panel further notes the extensive presence over the Internet of the trademark VOLVO and its extensive notoriety and use worldwide, including UK, where the Respondent is located.
Furthermore, the website linked to the disputed domain name includes links to third parties’ websites related to the Complainant’s business, offering competing goods and services.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”.
At the time of the disputed domain name’s registration, this Panel considers it unlikely that the Respondent did not know about VOLVO mark, and did not have it in mind. Several factors in this case lead to this conclusion. Particularly, the Panel notes the extensive presence of the trademark VOLVO over the Internet, as well as its extensive use and promotion worldwide, including in the UK.
The Panel further notes that the disputed domain name incorporates the Complainant’s trademark VOLVO in its entirety, which intrinsically creates a likelihood of confusion or at least a high risk of implied affiliation. Furthermore, the additional terms “world of” may point as well to the Complainant’s group, its worldwide business, and its global operations and product’s sales.
The Panel considers that the above-mentioned cumulative circumstances point to bad faith in the disputed domain name’s registration.
The Respondent’s use of the disputed domain name may corroborate the above conclusion. The disputed domain name is linked to a holding page, which includes various pay-per-click links that change regularly, some linked to third parties’ websites related to car insurances or vehicles retailers, in the same Complainant’s market sector and competing with the Complainant group’s business.
It is further remarkable that the Respondent, in various email communications to the Center and the Complainant, deliberately chose not to provide any explanation of evidence of its reasons for registering the disputed domain name and simply offered to settle the conflict by selling the disputed domain name to the Complainant.
The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain names 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
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; 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 Panel considers that, in the balance of probabilities, it is likely that the Respondent has used the disputed domain name with the intention to attract Internet users to its website for a commercial gain or any other sort of benefit derived from the links included in the website associated to the disputed domain name, under a pay-per-click system. It is further likely that the Respondent had a second intention related to the potential transfer of the disputed domain name to the Complainant for a value exceeding the out-of-pocket costs directly related to its registration.
It is important to note that the Respondent cannot deny responsibility for the content that appears on the website linked to the disputed domain name. The fact that such content or any links included in the disputed domain name have been generated by a third party, such as a registrar, or that the Respondent has not directly benefited, is not sufficient to prevent a declaration of bad faith. See section 3.5, WIPO Overview 3.0.
Taking into account all these cumulative circumstances, the Panel considers that it is likely that the disputed domain name was registered targeting the Complainant’s trademark VOLVO, and it is been used with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its mark to misleadingly attract Internet users, disrupting the Complainant’s business.
All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 <worldofvolvo.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: June 12, 2019
