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LDLC.COM v. LaPorte Holdings [2005] GENDND 645 (8 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. SooKwan Park

Case No. D2005-0448

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 SooKwan Park, Dobong-gu, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <myvolvo.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

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 Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On April 28, 2005, Korea Information Certificate Authority Inc. d/b/a DomainCa.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 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.

The Center appointed Ik-Hyun Seo as the Sole Panelist in this matter on May 27, 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

The Complainant’s predecessors and licensees have been selling cars, trucks, buses, construction equipment, components for airplane and rocket engines under the VOLVO trademark throughout the world for many decades, beginning in the 1920s. In this regard, Complainant owns trademark registrations for VOLVO throughout the world for various goods and services, which were registered before Respondent obtained registration for the subject domain name.

The Respondent appears to be an individual, and registered the subject domain name on April 3, 2001. The domain name is used presently to display content, and includes the following message:

“Domain name you visited is for sale. If you are a serious buyer, feel free to contact us. We will respond to your inquiry asap. Good name will support your business.”

5. Parties’ Contentions

A. Complainant

The disputed name is identical or confusing similar to marks in which the Complainant has rights. More specifically, Complaint asserts that it has many registrations throughout the world for the term VOLVO, and “myvolvo” is confusingly similar to VOLVO.

The Respondent has no rights or legitimate interest in the subject domain name.

Complainant has not authorized or otherwise given permission to Respondent to use Complainant’s trademarks. Complainant further asserts that it is inconceivable that Respondent was not aware of Complainant’s famous trademark. Moreover, the domain name is being used merely to display an offer for sale, rather than being used for a legitimate purpose.

The domain name was registered and is being used in bad faith.

Complainant contends that there is no reason for Respondent to have registered the subject domain name other than to sell it to Complainant and prevent Complainant from registering it. Complainant further contends that Respondent’s bad faith is evidenced by the fact that the subject domain name is being offered for sale. Moreover, Respondent was involved in prior domain name disputes, eventually losing his domain name registration for <playboysportsbooks.com>. (Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

While the default language of the proceedings is Korean by virtue of the language of the relevant registration agreement and an absence of agreement otherwise between the parties, the Panel is of the opinion that it would be appropriate under the circumstances of the case to render its decision in English, as explained in more detail below.

Respondent used the subject domain name to display content in English. In fact, rather detailed instructions for buying and eventually transferring the subject domain name are provided in very capable English. Further, neither the Complainant nor their attorneys appears to have any ability to communicate in Korean, and incur additional burdens by having to rely on the assistance of translators. But most important, the Panel notes that Respondent has decided to not participate in the proceedings, despite being served with notices from the Center in the Korean language and having received a Korean translation of the Complaint. Under these circumstances, the Panel finds it fair and more appropriate to render its decision in the language of the Complainant.

A. Identical or Confusingly Similar

The Complainant has submitted evidence of having trademark registrations for the term VOLVO, which were registered decades before Respondent obtained registration for the disputed domain name. The only difference between “myvolvo” and Complainant’s trademark is the addition of “my” at the beginning of Respondent’s domain name. The term “my” lacks distinctiveness and therefore has little impact when comparing the terms at issue. See Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 (<mysony.com>). Further, given the fame and strength of the mark VOLVO, such minor additions to this mark will still render the domain name confusingly similar to the mark.

For the above reasons, the Panel finds that the first requirement has been met.

B. Rights or Legitimate Interests

Complainant has made sufficient allegations to support its contention that Respondent has no rights or legitimate interests in the subject domain name. Respondent has not responded to the Complaint or these allegations. Since the Complainant’s allegations appear well-founded and reasonable on the basis of the case record before the Panel, and are undisputed by the Respondent, this Panel accepts the Complainant’s assertions as true, and concludes that the second requirement has been met.

C. Registered and Used in Bad Faith

The Panel finds that there is ample evidence of bad-faith as required under paragraph 4(a)(iii) of the Policy.

First, the Panel agrees with Complainant’s assertion that it is inconceivable that Respondent was unaware of Complainant’s VOLVO trademark. Despite this, Respondent registered <myvolvo.com> and then displayed content offering this domain name for sale.

Further, this Panel finds persuasive the facts noted by Complainant regarding Respondent’s pattern of bad-faith conduct. As noted by Complainant, the Respondent is also the registrant of various other domain names containing terms that correspond to well-known marks, which the Respondent registered and then simply offered for sale. Further, Respondent is a repeat guest to these proceedings, having lost ownership to <playboysportsbooks.com>. Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778.

Given the circumstances noted above, the Panel finds that the third and final element has also been established.

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 <myvolvo.com> be transferred to the Complainant.

Ik-Hyun Seo
Sole Panelist

Dated: June 10, 2005