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Volvo Trademark Holding AB v. Franks Foreign Auto [2004] GENDND 711 (21 June 2004)

1. The Parties

The Complainant is Volvo Trademark Holding AB, c/o AB Volvo, Goteborg, Sweden, represented by Sughrue Mion, PLLC, United States of America.

The Respondent is Franks Foreign Auto, c/o Frank Ponte, Orange, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <volvolamps.com> (“the Domain Name”) is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2004. On April 30, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the Domain Name. On May 3, 2004, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2004.

The Center appointed Harrie R. Samaras as the Sole Panelist in this matter on June 7, 2004. 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 following uncontested and unchallenged facts appear from the Complaint and its supporting documents.

Complainant is a corporation which owns the VOLVO trademark throughout the world and licenses it to AB Volvo and Volvo Car Corporation for use in connection with their respective businesses. Volvo Trademark Holding AB, AB Volvo and Volvo Car Corporation are collectively referred to as Complainant in the Complaint.

Complainant has provided evidence that it owns a number of live registrations for VOLVO on the Principal Register of the United States Patent and Trademark Office (“PTO”). (Attachments A and B to the Complaint). Many of the registrations cover vehicles and vehicle parts. Complainant, its predecessors, and licensees have been selling cars, trucks, buses and many other goods and services under the VOLVO mark since the 1950s.

Respondent registered the Domain Name on August 29, 2003. Respondent sells car parts on line through its website “www.volvolamps.com.”

5. Parties’ Contentions

A. Complainant

By virtue of Complainant’s longstanding use and the renown of Complainant’s VOLVO mark, VOLVO is associated exclusively with Complainant. The reputation associated with Complainant’s mark is excellent because Complainant’s goods and services are of high quality. In previous UDRP proceedings, Complainant’s VOLVO mark was found to be famous. Also, Complainant has been successful in having the following domain names transferred to it: <thevolvooceanrace.com>, <volvooceanrace.nu>, <volvoinsurance.com>, <volvoexhausts.com>, <volvovehicles.com>, <volvoclub.com>, <volvocars.tv>, <volvodele.nu>, <newvolvoparts.com>, and <volvopolska.com>.

The Domain Name is identical to and confusingly similar to Complainant’s trademark and trade name VOLVO. Furthermore, lamps are a product Complainant routinely sells. “Signal lamps” are expressly covered by one of Complainant’s U.S. trademark registrations. See Exhibits A and B to the Complaint (Registration No. 1,267,731). “Lamps” for a company that sells lamps thus has little or no source indicating significance. There is no question that <volvolamps.com> is confusingly similar to VOLVO. That Respondent added a disclaimer to the site after it received Complainant’s objections does not dispel the confusion.

Respondent has no rights or legitimate interests in the Domain Name. The VOLVO trademark is ubiquitous on Respondent’s site. Respondent has no permission or authorization to use the VOLVO mark and in fact admitted to Complainant in a telephone conversation that the products sold on the site are not genuine VOLVO lamps. Respondent is also not an authorized dealer of VOLVO parts or any other VOLVO products. Respondent also uses Volvo Lamps as a trade name. Respondent’s intent is not only to make a commercial gain, but to do so by attracting customers to its site by using the famous VOLVO mark, thereby misleading and deceiving them into believing that its business and goods are somehow sanctioned or approved by Complainant and are genuine. Respondent is a competitor with Complainant’s authorized VOLVO dealers, who are the only entities in the United States authorized to sell VOLVO-branded parts and to use the VOLVO trademark in conducting this business. Use of VOLVO as part of Respondent’s domain name creates the false and unfair impression that Respondent is also an authorized VOLVO dealer, when that is not the case. The fact that Respondent is in the business of selling non-genuine parts for VOLVO vehicles does not give it a right to use VOLVO in a domain name. In fact, even if Respondent offered “genuine” Volvo parts, he is not entitled to use the VOLVO marks as he does.

When Respondent selected VOLVO for its Domain Name, it was on constructive notice of Complainant’s trademark rights and its VOLVO trademark which has been famous for decades. Respondent selected <volvolamps.com> in bad faith. There is no reason for Respondent to use VOLVO except to attract consumers to its website and to sell products to others while infringing the VOLVO mark.

In an April 13, 2004 telephone conversation, Respondent’s contact, Michelle Ponte, claimed that Respondent is selling non-genuine VOLVO products that it believes work with Volvo cars. Thus, Respondent has acknowledged that the products its sells on its site are counterfeit goods. Respondent is attempting to attract customers to its site by using Complainant’s famous mark for commercial gain even after notice. Respondent’s activities have resulted in actual confusion. On March 29, 2004, Complainant’s attorney received an email from a VOLVO customer who was confused by the use of the <volvolamps.com> domain name. The customer was looking for genuine VOLVO signal lenses and headlights and discovered the goods offered at <volvolamps.com> were not genuine Volvo parts.

After receiving this email, Complainant’s attorney sent Respondent a cease and desist letter on April 2, 2004, informing him of the VOLVO customer who was confused by Respondent’s Domain Name. Complainant’s attorney and Respondent’s representative spoke via telephone on April 12, 2004, regarding the cease and desist letter. In that conversation, Respondent confirmed that it did not sell genuine Volvo products. Complainant’s attorney reiterated that Respondent’s use of the Domain Name is unauthorized, demanded transfer of the Domain Name to Complainant by April 20, 2004, and advised that Complainant would file a UDRP proceeding to obtain the transfer. Respondent did not transfer the Domain Name by that date.

Complainant refers to prior decisions demonstrating that in similar cases panels have decided in favor of Complainant and granted requests to transfer the domain names at issue.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under Paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The primary element of <volvolamps.com> is VOLVO which is identical to Complainant’s registered VOLVO mark. In fact “signal lamps” are expressly covered by one of Complainant’s U.S. trademark registrations. As upheld in previous decisions, the Panel considers the VOLVO mark to be considered a famous mark firmly associated with Complainant in connection with the sale of automobiles and other vehicles. See Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338 (June 12, 2000); Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. DNU2001-0001 (April 29, 2001); Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002); Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002); Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445 (August 1, 2002)).

The sole difference between the Domain Name and the VOLVO mark is the addition of the descriptive term “lamps.” Previous panels have held that if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. See, e.g., Volvo Trademark Holding AB v. Nick Bauer, WIPO Case No. D2002-1025 (June 16, 2003) (“new parts” added to VOLVO held confusingly similar); Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002) (“exhausts” added to VOLVO held confusingly similar). Here, adding the term “lamps”, which describes goods that both Complainant and Respondent sell, is likely to increase the likelihood of confusion. That is, the likely reaction of Internet users seeing the Domain Name would be that the site is operated by, or on behalf of, Complainant or a related company and they would be confused. See Educational Testing Service v. Park Jeong Foreign Language Inst., WIPO Case No. D2001-1064 (November 15, 2001). In fact Complainant has shown evidence of actual confusion by an Internet user searching for genuine VOLVO parts.

Also, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Name is identical or confusingly similar to the VOLVO mark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Respondent failed to provide any evidence that it has rights or legitimate interests in the Domain Name. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. See America Online, Inc. and AOL International, WIPO Case No. D2000-0654 (August 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond and the Complainant had made out a prima facie case).

When Respondent selected VOLVO as its domain name, it was at least on constructive notice of Complainant’s trademark rights by virtue of the many registrations for the VOLVO mark. Furthermore, it is inconceivable that Respondent was unaware of the VOLVO mark or the fact that the mark is owned by Volvo. Indeed, on its website Respondent is selling unauthorized Volvo parts using the VOLVO mark and the model number of the Volvo car with which the part can be used. Respondent’s website is accessible through the Domain Name that misleadingly appears to Internet users to be a domain name of the Complainant. Indeed, there has already been such confusion. Consumers may realize that this is not the case only once they have actually accessed the site and can see a disclaimer added recently by Respondent after it received Complainant’s objections. At this point, however, they have already been diverted and misled. Thus, the Panel finds that Respondent’s activities do not constitute use of the Domain Name in connection with a bona fide offering of goods or services. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (February 22, 2001).

Regarding Paragraph 4(c)(ii), Complainant points out that Respondent is using “VolvoLamps.com” as a trade name on Respondent’s website. (Exhibits D, E, F to the Complaint.) Thus, there is some evidence in the record that Respondent might be known by the Domain Name. However, without a Response from Respondent the Panel does not find this sufficient alone to demonstrate that the Respondent has rights or legitimate interests in the Domain Name.

Respondent is not making a legitimate non-commercial or fair use of the Domain Name “without intent for commercial gain.” Respondent is neither an authorized dealer in VOLVO parts or any other VOLVO products, nor has Complainant given Respondent permission or authorization to use the VOLVO mark. In fact, Respondent admitted to Complainant’s attorney in a telephone conversation that the products sold on the site are not genuine VOLVO lamps. Respondent is operating its website using the Domain Name for commercial gain. This is quite clear from Respondent’s website on which it provides the cost of the unauthorized VOLVO vehicle parts it sells and discusses shipping terms, ordering information and the like for its sale of those parts. Respondent’s intent is not only to make a commercial gain, but to do so by attracting customers to its site by using the famous VOLVO mark, thereby misleading and deceiving them into believing its business and goods are somehow sanctioned or approved by Complainant and are genuine. Moreover, Respondent could run its business without using VOLVO in its domain name. Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036 (March 22, 2002).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states non-exclusive circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 website 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 website or location or of a product or service on your website or location.”

As noted above, the Domain Name incorporates Complainant’s famous VOLVO mark which is firmly associated with Complainant’s goods and services. Considering the nature of Respondent’s business (selling unauthorized VOLVO parts) it is clear that Respondent was fully aware of Complainant’s rights in the registered VOLVO mark when it adopted VOLVO for its Domain Name. Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601 (October 9, 2003) (holding bad faith registration was shown by registration of <volvopolska.com> to use Complainant’s reputation to attract Internet users to registrant’s website for commercial gain); see also, Volvo Trademark Holding AB v. Roger Nichols, WIPO Case No. DTV2001-0017 (August 31, 2001).

As mentioned above, Respondent could have chosen a domain name that does not incorporate Complainant’s famous VOLVO mark. Instead, Respondent is using a domain name that is confusingly similar to the famous VOLVO mark to offer for sale on its website unauthorized VOLVO parts that are in competition with VOLVO’s parts business. Complainant has already been confronted with an instance of actual confusion by virtue of Respondent’s use of the Domain Name to market and offer for sale its unauthorized VOLVO parts. The customer was looking for genuine Volvo signal lenses and headlights and was confused by the Domain Name, finally discovering the goods offered at Respondent’s website were not genuine Volvo parts. Respondent’s activities constitute evidence of bad faith use of the Domain Name under Paragraph 4(b)(iii and iv) of the Policy. Volvo Trademark Holding AB v. Soeren Groenlund, WIPO Case No. DNU2002-0003 (September 26, 2002) (holding Respondent registered and used <volvodele.nu> in bad faith in conjunction with website offering vehicle parts for sale).

Furthermore, Respondent’s conduct after being informed of the confusion evidences its bad-faith use of the Domain Name. After receiving the e-mail from the confused customer, Complainant’s attorney sent Respondent a cease and desist letter. In that letter, Complainant advised that Respondent’s use of <volvolamps.com> was unauthorized and that a Volvo customer was actually confused. Complainant’s attorney and Respondent’s representative spoke via telephone regarding Complainant’s cease and desist letter. In that conversation, Respondent confirmed that it did not sell genuine Volvo products. Complainant’s attorney reiterated that Respondent’s use of the Domain Name is unauthorized and demanded transfer of it to Complainant by April 20, 2004. Respondent was further advised that Complainant would file a UDRP proceeding against the domain name. Respondent did not comply with Complainant’s written and oral requests to transfer the Domain Name.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.

7. Decision

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 name <volvolamps.com> be transferred to the Complainant.

Harrie R. Samaras
Sole Panelist

Dated: June 21, 2004