Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by Zacco Sweden AB, Sweden.
Respondent is Dennis Lin, United States of America (“United States”).
The disputed domain names <volvocarspuentehills.com> and <volvopuentehills.com> are registered with Domain.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2020, 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 Complainant on December 9, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 14, 2020.
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 Respondent of the Complaint, and the proceedings commenced on December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. Informal communications were sent by Respondent to the Center on December 16, 2020, and December 30, 2020. Upon request of Respondent, the due date for Response was automatically extended to January 9, 2021, pursuant to the Rules, paragraph 5(b). On January 21, 2021, the Center informed the Parties it would proceed to appointment of the administrative Panel.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 31, 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.
Complainant is a company organized under the laws of Sweden, which belongs to the “Volvo” group of companies, well-known for the production and distribution of cars, trucks, buses, and other construction equipment.
Complainant has evidenced to be the owner of numerous registered trademarks relating to its company name and brand VOLVO, including, but not limited to, the following:
- Word/device mark VOLVO, United States Patent and Trademark Office (USPTO),
registration number: 1220779, registration date: December 21, 1982, status: active;
- Word mark VOLVO CARS, European Union Intellectual Property Office (EUIPO),
registration number: 010728731, registration date: October 12, 2012, status: active.
Complainant, moreover, has demonstrated to own the domain name <volvocars.com>, which resolves to Complainant’s official website at “www.volvocars.com”, used to promote Complainant’s automobile business and related services worldwide.
Respondent, according to the disclosed WhoIs information for the disputed domain names, is a resident of the United States who registered the disputed domain name <volvocarspuentehills.com> on January 3, 2017, and the disputed domain name <volvopuentehills.com> one day ahead on January 2, 2017. By the time of the rendering of this decision, both disputed domain names redirect to typical pay-per-click (“PPC”) websites, displaying hyperlinks to Internet content relating both to Complainant as well as to independent third parties, including direct competitors of Complainant on the automobile market.
Complainant requests that the disputed domain names be transferred to Complainant.
Complainant contends that its VOLVO trademark has been intensively used for more than 90 years for a wide variety of products and services such as cars, trucks, and buses, and nowadays ranks among the world’s most valuable brands, very well-known, inter alia, in the United States.
Complainant submits that the disputed domain names are confusingly similar to Complainant’s VOLVO and VOLVO CARS trademarks, as they each include at least the VOLVO trademark entirely, with the addition of the geographic term “PuenteHills”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent has not been granted any license or other authorization to use Complainant’s VOLVO or VOLVO CARS trademarks, (2) Respondent is not an authorized dealer of and has never had any business relationship with Complainant, and (3) Respondent has intentionally chosen the disputed domain names based on Complainant’s trademarks in order to generate traffic and income through websites displaying PPC links of which several lead to sites operated by Complainant’s competitors. Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) it is obvious that the fame and value of Complainant’s VOLVO and VOLVO CARS trademarks has motivated Respondent to register the disputed domain names, and (2) Respondent incorporates Complainant’s well-known trademarks into the disputed domain names as bait to attract visitors to commercial websites and to boost traffic and thereby income, which amounts to bad faith use.
Respondent did not file a formal Response, however, Respondent contacted the Center by emails of December 16, 2020, and December 30, 2020, in which it, e.g., requested a prolongation of the deadline to file a Response, but did not argue on the substance of this dispute.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Respondent's formal default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.
The Panel concludes that the disputed domain names are confusingly similar to the VOLVO and VOLVO CARS trademarks in which Complainant has rights.
Both disputed domain names incorporate the VOLVO trademark in its entirety, and the disputed domain name <volvocarspuentehills.com> includes as well the entire VOLVO CARS trademark. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive, geographic or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the geographic term “PuenteHills” does not dispel the confusing similarity arising from the incorporation of Complainant’s VOLVO and/or VOLVO CARS trademarks in the disputed domain names.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s VOLVO trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names and Respondent does not appear to have any trademark rights associated with the term “Volvo” on its own. Finally, Respondent obviously has neither used the disputed domain names for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain names resolve to typical PPC websites showing a variety of hyperlinks to third parties’ websites, including companies in the automobile industry which are Complainant’s direct competitors, for the obvious purpose of generating PPC revenues. UDRP panels agree that using a domain name to host a PPC website does not present a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s trademark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not argued on the substance of this dispute whatsoever, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
Resolving the disputed domain names, which are confusingly similar to Complainant’s well-known VOLVO and VOLVO CARS trademarks, to typical PPC websites showing a variety of hyperlinks to active third parties’ websites, which even include companies in the automobile industry which are Complainant’s direct competitors, for the obvious purpose of generating PPC revenues, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own websites by creating a likelihood of confusion with Complainant’s VOLVO and/or VOLVO CARS trademarks as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <volvocarspuentehills.com> and <volvopuentehills.com> be transferred to Complainant.
Stephanie G. Hartung
Date: Marzo 5, 2021
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