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Volvo Trademark Holding AB v. Auto Shivuk [2005] GENDND 1101 (8 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Auto Shivuk

Case No. D2005-0447

1. The Parties

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

Respondent is Auto Shivuk, Bet Dagan, Gush Dan, Israel.

2. The Domain Name and Registrar

The disputed domain name <volvo-auto-body-parts-online.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2005. On April 27, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 27, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 20, 2005.

The Center appointed Torsten Bettinger as the sole panelist in this matter on May 25, 2005. 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

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 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 July 7, 2002. Respondent sells VOLVO car parts online through its website at “www.volvo-auto-body-parts-online.com”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

Complainant contends that by virtue of Complainant’s longstanding use and the renown of Complainant’s VOLVO mark, VOLVO is associated exclusively with Complainant and that the reputation associated with Complainant’s mark is excellent because Complainant’s goods and services are of high quality.

Complainant refers to a number of previous UDRP decisions, in which Complainant’s VOLVO mark was found to be famous. In these administrative proceedings 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>, <volvoareo.com>, <volvo.ws>,<volvoworld.com>, <volvopolska.com>, <volvolamps.com>, and <wwwvolvo.com>. (See Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338; Volvo Trademark Holding AB v. Eurovendic (erik schroder), WIPO Case No. D2001-0001; Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292; Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO D2002-0521; Volvo Trademark Holding AB v. Lost In Space, SA, WIPO Case No. D2002-0445; Volvo Trademark Holding AB v. Roger Nichols, WIPO Case No. DTV 2001-0017, Volvo Trademark Holding AB v. Soeren Groenlund, WIPO Case No. DNU 2002-0003 and Volvo Trademark Holding AB v. Nick Bauer, WIPO Case No. D2002-1025, Volvo Trademark Holding AB v. volvoaero.com, WIPO Case No. D2001-0723; Volvo Trademark Holding AB v. Tarek Abd El Moaty, WIPO Case No. D2004-001; Volvo Trademark Holding AB v. Enterprises ReVolvo, WIPO Case No. D2004-0086; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Volvo Trademark Holding AB v. Franks Foreign Auto, WIPO Case No. D2004-0315; Volvo Trademark Holding AB v. Lorna King, WIPO Case No. D2004-0909.)

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant asserts that the Domain Name is identical to and confusingly similar to Complainant’s trademark and trade name VOLVO.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant states none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant argues that at the time Respondent selected VOLVO as part of its domain name, it was on constructive notice of Complainant’s trademark rights under 15 U.S.C. and that Respondent has been aware of the famous VOLVO trademark, or the fact that the mark is owned by Volvo when registering the domain name. Complainant further states that Respondent has no permission or authorization to use the VOLVO mark in its domain name and that Respondent is not making a legitimate non-commercial or fair use of the domain name as the website under the disputed domain name leads to a website selling auto parts.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that there is no reason for Respondent to use Complainant’s mark in its domain name other than to use it to attract the public to Respondent’s website for commercial gain. Respondent alleges that by using Volvo, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website. Complainant further alleges that selling parts under the Volvo name, Respondent creates the unmistakable impression that it is authorized or endorsed or approved by Volvo, and/or that it is an authorized Volvo dealer.

Complainant asserts that Respondent is in the business of warehousing domain names that correspond to well-known car brands. In support of this assertion Complainant presents printouts of web pages and WHOIS printouts for the following 10 domain names held in the name of Respondent: <cadillac-auto-body-parts-online.com>, <buick-auto-body-parts-online.com>, <mercedes-auto-body-parts-online.com>, <jeep-auto-body-parts-online.com>, <nissan-auto-body-parts-online.com>, <kia-auto-body-parts-online.com>, <honda-auto-body-parts-online.com>, <audi-auto-body-parts-online.com>, <bmw-auto-body-parts-online.com>, <saab-auto-body-parts-online.com>.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic , WIPO Case No. D2000-1698 <guiness.com>, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 <ansellcondoms.com>, Dixons Group Plc v. Mr. Abu Abdullaah , WIPO Case No. D2001-0843 <dixons-online.net>, AT&T Corp. v. Amjad Kausar , WIPO Case No. D2003-0327 <attinternet.com>, <attuniversal.com>, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The disputed domain name wholly incorporates Complainant’s famous trademark VOLVO, used in connection with cars and parts thereof since 1950. The fact that the words “auto-body-parts-online” are added to Complainant’s trademark do no eliminate the similarity between Complainant’s trademark and the disputed domain name, as “auto-body-parts-online” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of other descriptive words to such marks.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429)

The Panel thus finds that the domain name <volvo-auto-body-parts-online.com> is confusingly similar to the trademark in which Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The fact that Respondent has chosen not to submit a Response is particularly relevant to the issue of whether Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Administrative Panel finds no exceptional circumstances for Respondent’s failure to submit a Response. Nevertheless, the Panel still has the responsibility of determining which of Complainant’s assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts (see, Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438).

The case before the Panel raises the question whether an unauthorized dealer of auto parts has a legitimate interest to use the manufacturer’s trademark with the addition of descriptive elements as domain name.

Paragraph 4(c)(i) of the Policy provides that a use of a domain name is legitimate if, prior to commencement of the dispute, the respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Here, there is no dispute concerning Respondent’s status: It is an unauthorized seller of VOLVO auto parts, and has been offering VOLVO auto parts since prior to the commencement of this administrative proceeding. The only issue before the Panel, then, is whether Respondent’s offerings may be characterized as bona fide.

The Panel observes that there are different views as regards the question of the conditions under which authorized or non-authorized resellers or distributors have a legitimate interest to use as domain name the manufacturer’s trademark in identical form or with the addition of descriptive elements.

Three views can be distinguished in the previous WIPO UDRP decisions:

(1) At one end of the spectrum, it is argued that the authorization to market the products under the trade name does not as a matter of principle constitute an authorization to use the manufacturer’s trademark as a domain name or as part of a domain name. If the use of the domain name is not expressly granted, the right to market the trademark holder’s products under the complainant’s trademark merely establishes a right to use the trademark for the marketing of the trademark holder’s products but not a more extensive right to use the trademark as a domain name (See Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 - <worldnokia.com>, finding that a licensed reseller could only have a right to a domain name which included the trademark NOKIA if the trademark owner has specifically granted that right. (See Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 – <volvoexhausts.com>, finding that the manufacturer of “unoriginal” spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but that this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name.).

(2) The contrary opinion was upheld in a dispute between Milwaukee Electric Tool Corporation and one of its resellers concerning the domain name <milwaukeetool.com> (Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002–0774). The panel pointed out that it did not suggest a general rule regarding relationships between trademark holders and authorized distributors, but in the specific case held that a reseller who was entitled by contract to use the complainant’s trademark in his advertising and had lawfully marketed the trademark holder’s products over many years had a legitimate interest in the domain name and in any event was not using it in bad faith. Similar reasoning was applied in the Daimler Chrysler A.G. v. Donald Drummonds decision (WIPO Case No. D2001-0160, with dissent,), in which the holder of the domain name <mercedesshop.com> was admittedly not acting as a reseller but marketed spare parts and accessories on the Internet using a disclaimer, and for this reason was regarded by the panel as a legitimate user of the domain name. Similar views have also been upheld by UDRP panels. (See Draw-Tite Inc. v. Plattsburg Spring Inc., WIPO Case No. D2000-0017 – <drawtite.com>; Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187 – <webergrills.com>; <webergrill.com>).

(3) The majority view lying between these two was first put forward in the case of Oki Data Americas, Inc. v. ASD, Inc., a conflict between a US manufacturer of computer accessories and an authorized reseller (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903 – <okidataparts.com>). In the panel’s view, the use of a manufacturer’s trademark as a domain name by an authorized dealer or reseller is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels. (Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085 - <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 - <experiancredit.com>) and have also been applied in cases where there was no contractual relationship between the complainant and the respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 – <discount-marlboro-cigarettes.com>).

This Panel follows the majority view put forward in the Oki Data case that a reseller or other sales agent can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements. The Panel also holds the view that the Oki Data criteria are appropriate to be applied in cases, as the present case, where the complainant has not authorized therespondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent

In the case before the Panel, Respondent’s conduct meets all the OKI Data criteria.

It is undeniable that Respondent was aware of Complainant’s famous mark prior to the registration of the disputed domain name and the establishment of the Respondent’s website. This fact alone, however, according to the Oki Data criteria, is not determinative on the issue, whether the Respondent uses the domain name in connection with a bona fide offering of goods or services.

Complainant has not presented evidence that the Respondent has used the domain name to sell other than the trademarked goods. In fact, the Respondent is using the <volvo-auto-body-parts-online.com> site to promote only VOLVO auto parts.

The Respondent’s website also fulfills the requirement that the Respondent prevents confusion by making clear in its use of the domain name that it is not the trademark owner. Although Respondent’s website does not contain a disclaimer which states that it is not affiliated with Complainant, Respondent on its website accurately discloses that it is a mere distributor of VOLVO auto parts. There are no facts which would suggest that the Respondent intentionally trades on the fame of Complainant and intentionally has adopted his website presentation so as to benefit from the goodwill of the VOLVO mark. The Respondent does not use the Logo of Complainant or otherwise improperly suggests that it is the trademark owner, or that the website is the official site. In fact, the Respondent merely uses a domain name which is descriptive of the business conducted under the domain name. The Panel therefore does not find that Internet users are likely to believe they are dealing with an authorized agent of Complainant or that Complainant sponsors or otherwise endorses the site.

Complainant has also not presented evidence that Respondent has registered numerous VOLVO-related domain names, and has improperly communicated with VOLVO customers. The fact that Respondent has registered other domain names incorporating famous car brands (<audi-auto-body-parts-online.com>, <nissan-auto-body-parts-online.com>, <bmw-auto-body-parts-online.com> etc. ) does not make the use of the disputed domain name unfair or illegitimate. Respondent uses the domain names which incorporate other car brands for separate websites that only offer car parts which are related to the respective domain names (i.e. Audi car parts, Nissan car parts, BMW car parts). The use of these domain names cannot be considered as warehousing or as offering of other brands or products under the disputed domain name. Therefore, the present case does differ from those where a respondent is predominantly offering under a certain domain name goods and services non-related to that domain name (cf. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 - <discount-marlboro-cigarettes.com>; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 – <mercedesshop.com>; ISL Worldwide and FIFA .v. Western States Ticket Service, WIPO Case No. D2001-0070 - <fifatickets.com>; Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 - <nikondealer.com>).

No evidence was produced by Complainant that the Respondent has registered domain names consisting of famous trademarks to corner the market for such products or to deprive the trademark owner of reflecting its own mark in a domain name. There are plenty of other variations the trademark for others and Complainant is not deprived in the use of its own trademark (see Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481 - <porsche-buy.com>; Magnum Piering, Inc. v. Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 - <magnumpiering.com>).

Complainant has not presented any other evidence that undermines the bona fides of Respondent’s use. Accordingly, the Panel finds that the Respondent, an online Volvo auto parts store, has a legitimate interest (under the Policy) in using the domain name <volvo-auto-body-parts-online.com> to reflect and promote that fact.

As the panel in the Oki Data Case rightly pointed out, it is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cyber squatting. It cannot be used to litigate all disputes involving domain names. If trademark owners wish to prevent the use of their marks by authorized or unauthorized resellers in domain names, they should seek recovery in classic trademark infringement or dilution litigations. In the absence, however, of some element of illegitimacy, they should not use the Policy to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903 – <okidataparts.com>).

C. Registered and Used in Bad Faith

It follows from what has been said about legitimacy that the Panel is satisfied that the Respondent is not creating a likelihood of confusion using the domain name to attempt to attract, for commercial gain, Internet users to its website and that there are no other ground for a finding of bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Torsten Bettinger
Sole Panelist

Dated: June 8, 2005