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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Cup International Limited
Case No D2000-0338
1. The Parties
The Complainant is Volvo Trademark Holdings AB (hereafter referred to as "Volvo") which is a Swedish corporation with a principal place of business at c/o AB Volvo, VHK, dept 641, SE-405 08 Goteborg, Sweden. The Respondent, Cup International Limited (hereafter referred to as "Cup") is a New Zealand registered company with an address at 1/3 Pebble Place, Mission Bay, Auckland, NI005, New Zealand.
2. The Domain Name and Registrar
The domain name the subject of the dispute is "thevolvooceanrace.com". The Registrar is Network Solutions who have confirmed that Cup is the current registrant of "thevolvooceanrace.com". Network Solutions have also confirmed that the administrative contact for "thevolvooceanrace.com" is Justin Nicholas at Cup at the address referred to above. Mr Nicholas’ email address is jnicholas@KRONOSNZ.co.nz
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center on April 27, 2000 by email, and by hard copy on April, 28, 2000. Acknowledgement of the receipt of the complaint was given to the Complainant’s representative Cynthia Clarke Weber of Sughrue, Mion, Zinn, MacPeak & Seas, PLLC of 2100 Pennsylvania Avenue, Washington DC 20037, USA on May 1, 2000 with notification being given to the respondent by post. It appears that no confirmation of that notification was obtained.
The Panel has seen a completed copy of the WIPO "formal requirements compliance check list" and is satisfied that the complaint has complied with the formal requirements of the Rules and that the complaint was properly notified in accordance with the Rules.
Attempts to communicate notification of the complaint to the Respondent were made by courier, post, fax and email. From the papers that the Panel has seen it would appear that the courier was not delivered. There is a Swiss post "track and trace" document which states that proof of delivery is "not available". A copy of the fax return sheet shows that the fax was not received on number 6195212992 which is the fax number registered at Network Solutions. An email communication was sent to jnicholas@KRONOSNZ.co.nz on May 5, 2000 and also to "firstname.lastname@example.org" on the same date enclosing the notification of the complaint and commencement of administrative proceedings, the complaint transmittal cover sheet, the complaint, the schedule of exhibits and an amendment to the complaint. The amendment to the complaint was contained in a letter of May 4, 2000 sent by the Complainant’s representatives by way of email, courier and fax adding a further paragraph 27 to the complaint.
The email of May 5, 2000 sent to "email@example.com" appears not to have been received. Notice of failure was given on May 10, 2000. However it appears that the email of May 5, 2000 was received at the email address "KRONOSNZ.CO.NZ". The Panel is therefore satisfied that notification of the case was received by the Respondent on May 5, 2000 in accordance with Rule 2(f)(iii). Accordingly the formal date of the commencement of the proceedings was May 5, 2000. The Respondent was properly notified in accordance with paragraph 2(a) of the Rules.
No response has been received from the Respondent by the last date for serving a Response, May 24, 2000. Notification of the Respondent’s default was emailed to jnicholas@KRONASNZ.co.nz on May 26, 2000. The first email sent to that address at 11.45pm, May 26, 2000 received the response "wheres the attachment?" The email was re-sent to jnicholas@KRONASNZ.co.nz at 11.47am on the following day, May 27, 2000, presumably enclosing the attachment. There is no evidence of a Response ever having been filed by the Respondent.
The Administrative Panel was appointed by notification dated May 30, 2000 and consists of a single member; Clive Duncan Thorne. The Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel is unaware of any further submissions having been made by the parties. Accordingly in the absence of a response from the Respondents the Panel proceeds on the basis of the complaint received on April 27, 2000 (as amended with the addition of paragraph 27 to the complaint). The date scheduled for the decision is June 12, 2000.
4. Factual Background
The Complainant handles the trade mark affairs of AB Volvo and Volvo Car Corporation throughout the world. AB Volvo and Volvo Car Corporation each own 50% of Volvo. The Complainant’s predecessors in interest have been selling motor vehicles and other products under the trade mark "VOLVO" throughout the world for many years beginning in the 1920’s. The mark "VOLVO" is registered extensively as a trade mark and service mark throughout the world. In the United States there are 18 trade mark registrations for "VOLVO" for a variety of goods and services. A list of these has been annexed as Exhibit A to the complaint. The Complainant submits that by virtue of long and extensive use of the mark "VOLVO" it has become famous and is "one of the best known automobile and vehicle trade marks in the world today". In the absence of evidence to the contrary the Panel is prepared to accept this fact.
In 1998 Volvo purchased the rights to the Whitbread Round the World Race and so became a major sponsor in the world of sailing. The Whitbread Round the World Race is well known as one of the premier world ocean races. Upon purchase of the rights to this race Volvo changed the name of the race to "Volvo Ocean Race". The race is due to begin in September 2001. In an effort to publicise the event Volvo maintains a website at "http://www.volvooceanrace.com". Since renaming the Whitbread race in 1998 Volvo has used the mark VOLVO OCEAN RACE extensively in connection with publicity, goods and services relating to the race.
A number of trade mark applications for the mark "VOLVO OCEAN RACE" have been filed in the United States including for, inter alia, printed matter under application number 75/509069, for bags and other products and clothing items under application number 75/667015. A copy of application number 75667015 is annexed to the complaint as Exhibit C.
The Complainant also asserts that as a result of its long use of the VOLVO mark, the renown of the Complainant’s goods and services and the highly publicised sale of the Whitbread Race the Complainants marks "VOLVO" and "VOLVO OCEAN RACE" are associated exclusively with the Complainant. The Panel, in the absence of any evidence to the contrary, is prepared to accept this.
The Respondent registered the domain name "thevolvooceanrace.com" on April 28, 1999. Exhibit D to the complaint is a copy of the domain name registration provided by Network Solutions.
The Complainant apparently contacted the Respondent by letter dated December 3, 1999 to request that it ceased and desisted use of the Complainant’s mark in its domain name. The Respondent did not comply with the request and the dispute has proceeded to the current arbitration. The Complainant indicates in paragraph 20 of its complaint that a copy of the letter of December 3, 1999 is attached as Exhibit C. The Panel has not been able to find a copy of this letter within the papers submitted as the complaint. Indeed Exhibit C is a print out of the Complainant’s trade mark application 75667015. Nothing would appear to turn on the absence of the December 3, 1999 letter from the Complainant.
In passing the Panel should refer to the amendment to the complaint contained in the letter of May 4, 1999 from the Complainant’s representatives. Paragraph 27 certifies that the information contained in the complaint is to the "best of the Complainant’s knowledge complete and accurate" and confirms that the complaint "is not being presented for any improper purpose such to harass" and that "the assertions in the Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by good faith and reasonable argument". A copy of the May 4, 2000 letter is indicated on the face of the letter as having been sent to the Respondent.
5. Parties’ Contentions
In the absence of a response from the Respondent the Panel can only consider the Complainants contentions. In summary these are as follows:
(i) That the Respondent has no rights or legitimate interest in the domain "thevolvooceanrace.com". This submission is based on Volvo’s continuous and long prior use of its marks VOLVO and VOLVO OCEAN RACE (paragraph 17).
(ii) That the Respondent registered the domain name "thevolvooceanrace.com" in bad faith. There is no justification for the Respondent’s registration of the mark other than to try to sell it to the Complainant or divert the public from the Complainant’s web site. (paragraph 18)
The Respondent’s registration and use of the Complainant’s mark is intended to and does and will confuse the relevant purchasing public into believing that the Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the Respondent’s web site at "thevolvooceanrace.com". (paragraph 18)
As further evidence of bad faith the Responded has also registered domain names "americascup.com" and "teamnewzealand.com". The Respondent refers to proceedings which were taken in the United States district court for the northern district of California; Quokka Sports Inc –v- Cup International Limited (case number C995076DLJ). According to paragraph 19 of the complaint a report of settlement transferring the domain names in dispute to the trade mark owners was read into the court record on December 22, 1999.
6. Discussion and findings
Paragraph 4(a) of the Rules requires the Complainant to prove three elements:
(i) That the Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
(i) The Respondent’s domain name is identical and confusingly similar to a trade mark or service in which the Complainant has rights.
The Panel is satisfied that the domain name ""volvooceanrace.com" is confusingly similar to the registered trade mark "VOLVO" which falls into the category of a "famous mark" as one of the best known automobile and vehicles trade marks in the world. The Panel is also prepared to accept that the domain name is identical to the unregistered mark VOLVO OCEAN RACE which has been used extensively by Volvo since renaming the Whitbread Race in 1998 and which is the subject of the US trade mark applications referred to above. There is little doubt that Volvo would be able to establish that it has trading good will in the mark "VOLVO OCEAN RACE". The Complainant therefore succeeds in respect of paragraph 4(a)(i).
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
No evidence has been served or is relied upon by the Respondent to the effect that it has rights or legitimate interests in respect of the domain name. The Complainant argues that the only interest that the Respondent has is to try to sell the domain name to the Complainant or to divert the public from the Complainant’s web site. In the absence of any evidence of legitimate trading by the Respondent in respect of "thevolvooceanrace.com" the Panel holds that the Complainant has succeeded in approving paragraph 4(a)(ii).
(iii) The domain name has been registered and has been used in bad faith.
It should be noted that paragraph 4(b) of the Rules sets out circumstances which in particular but without limitation shall be evidence of the registration and use of the domain name in bad faith. Again the burden of proof is upon the complainant to show use in bad faith.
Sub paragraph 4(b)(iv) provides as an instance of registration and use of a domain name in bad faith circumstances in which:
"By using the domain name (the Respondent) has intentionally attempted to attract, for commercial gain, internet users to your web site or other online location by creating a likelihood of confusion for the Complainants 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 is satisfied that the Complainant has shown a prima facie case falling within this sub paragraph. There can be no justification for registration of the mark "thevolvooceanrace.com" by the Respondent other than to try to sell the mark to the Complainant or to divert the public from the Complainant’s web site by creating a likelihood of confusion. In particular the Panel has in mind that the sale of the rights in the Whitbread Race to Volvo was highly publicised and that the Respondent registered the domain name after the sale of the race. In the absence of evidence from the Respondent the Panel is entitled to accept the Complainant’s submissions that the Respondent’s registration was made with the intention of creating a "likelihood of confusion with the Complainant’s mark".
The Complainant refers to the litigation in the United States district court for the northern district of California relating to the domain name "americascup.com" and "teamnewzealand.com". The Panel is not in a position to rely upon the circumstances of that litigation in reaching its decision. The Respondent provides no evidence beyond the existence of the litigation and the report of settlement transferring the domain names to the owners of the trade mark AMERICASCUP and TEAMNEWZEALAND. However sub paragraph 4(b)(ii) of the Rules provides that registration of a domain name "in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct" may be evidence of bad faith. The fact that the domain names "americascup.com" and "teamnewzealand.com" were registered by the Respondent when there were other owners of the trade marks "AMERICASCUP" and "TEAMNEWZEALAND" is in the Panel’s view prima facie evidence of the Respondent engaging "in a pattern of such conduct" as envisaged in sub paragraph 4(b)(ii).
It follows that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Rules.
The Panel decides that the domain name "thevolvooceanrace.com" is:
(i) Identical or confusingly similar to a trade mark to which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith by the Respondent.
The Complainant succeeds in his complaint.
The Panel hereby requires that the registration of the domain name "thevolvooceanrace.com" be transferred to the Complainant Volvo Trade Mark Holding AB.
CLIVE DUNCAN THORNE
Dated: June 12, 2000