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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. volvoaero.com
Case No. D2001-0723
1. The Parties
The Complainant is Volvo Trademark Holding AB, a corporation organized in Sweden, with place of business in Goteborg, Sweden.
The Respondent is volvoaero.com, with address in Bartolo, Argentina.
2. The Domain Name and Registrar
The disputed domain name is <volvoaero.com>.
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on May 31, 2001, and via courier mail received by WIPO on June 5, 2001. Complainant paid the requisite filing fees. On June 8, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar’s Response received by WIPO on June 11, 2001).
(b) On June 12, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) On July 2, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.
(d) On July 6, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 9, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On July 11, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 24, 2000. On July 11, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant, a wholly-owned entity of the Volvo group of companies, has registered the word trademark "VOLVO" on the Principal Register of the United States Patent and Trademark Office (USPTO). Complainant represents that there are eighteen such registrations for goods and services valid and subsisting, and has submitted a U.S. Trademark Electronic Search System (TESS) printout listing live trademark registrations as evidentiary support . (Complaint, paras. 7-9 & Exhibit A)
Complainant uses the "VOLVO" mark in commerce in the United States and throughout the world. Complainant asserts a first use of the mark sometime in the 1920s (id., para. 9).
Complainant’s mark is well known throughout the world, at least in connection with sales of automobiles and trucks (id.)
Volvo Aero Corporation is a member of the Volvo group of companies. Complainant has submitted evidence in the form of web page printouts from its <volvo.com> website that this corporate entity manufactures and provides service support for aircraft engines. Complainant has not submitted evidence that a product is marketed under the trademark "Volvo Aero". The only aircraft engine identified on the web pages submitted by Complainant is "Volvo RM12". Complainant’s web pages state, for example, "Volvo Aero is the name of the aircraft engine industry in Sweden." (Id., Exhibit B). Complainant has submitted evidence that various services are marketed under the "Volvo Aero" mark, including aircraft engine maintenance and leasing.
According to the registrar’s verification response to WIPO, dated June 11, 2001, Respondent is the listed registrant of the disputed domain name <volvoaero.com>. The Administrative Contact, at the same address, is <volvoaero.com>. According to a Network Solutions’ WHOIS database printout furnished by Complainant, the record for the disputed domain name was created on February 23, 2001, and was last updated on May 30, 2001 (Complaint, Exhibit C).
There is no evidence on the record of this proceeding that Respondent has made use of the disputed domain name, nor has Respondent contacted Complainant regarding the name.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
Complainant states that it is holder of trademark registrations in the United States and elsewhere for the word mark "VOLVO", that it uses that mark in commerce around the world, and that the mark is well known.
Complainant alleges that it has rights in word mark "VOLVO AERO" based on its use of that mark in connection with the marketing of aircraft and rocket engines and services related thereto.
Complainant indicates that Respondent has no rights or legitimate interests in the disputed domain name <volvoaero.com>. Respondent bases this claim on its continuous use of the marks "VOLVO" and "VOLVO AERO" for many years.
Complainant asserts that Respondent registered and has used the disputed domain name in bad faith. Evidence of such bad faith is said to consist of: (1) Respondent’s only justification for registration of the name would be to sell it to Complainant or to misleadingly divert consumers from Complainant’s website; (2) Respondent’s failure to use the name, and (3) Respondent’s knowing infringement of Complainant’s mark (since attaching "aero" to the mark "VOLVO" would only be done by a person familiar with Complainant’s "VOLVO AERO" business).
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., paragraph 15(a)).
Complainant has registered the word trademark "VOLVO" on the Principal Register of the USPTO (see Factual Background supra). Complainant’s registration of the "VOLVO" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law . Respondent has not challenged Complainant’s assertion of rights in the mark. Complainant has used the "VOLVO" mark in commerce for a substantial period of time in connection with the sale of automobiles and trucks around the world, and Complainant’s "VOLVO" mark has become well known in that connection. The Panel determines that Complainant has rights in the trademark "VOLVO", and that such rights arose prior to Respondent’s registration of the disputed domain name.
Complainant asserts common law trademark and service mark rights in the term "VOLVO AERO". Complainant has not submitted evidence to the Panel sufficient to establish a prima facie case that its has acquired common law trademark rights in "VOLVO AERO". Complainant has not submitted evidence that products are marketed under that name. Complainant has, however, submitted evidence to the Panel sufficient to establish a prima facie case that it has acquired common law rights in the service mark "VOLVO AERO". Such evidence is in the form of web page printouts indicating that the term "VOLVO AERO" is used in connection with providing services and support for aircraft engines. Respondent has not challenged Complainant’s prima facie evidence. The Panel determines that Complainant has common law rights in the service mark "VOLVO AERO" .
The disputed domain name <volvoaero.com> is essentially identical to Complainant’s "VOLVO AERO" mark. The addition of the generic top level domain ".com" and the elimination of the space between terms are not material from a legal standpoint in the present context of comparing the service mark and the domain name. The Panel determines that the disputed domain name is identical to a service mark in which Complainant has rights. Complainant has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.
Respondent has made no use of the disputed domain name, and has presented no evidence of legitimate rights or interests in the name. Registration alone does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
In this proceeding Respondent has taken no action other than to register the disputed domain name. Respondent’s action prevents Complainant from registering its service mark as a domain name. Since Respondent has identified itself in its registration listing only by the disputed domain name, it is not practicable to determine whether it may have also registered other marks in domain names such as to demonstrate a pattern of conduct. However, the combination of registration of the well-known mark ("VOLVO") incorporated in a subsidiary common law mark ("VOLVO AERO"), failure to use the name, and the absence of any apparent good faith use that Respondent could make of the name in the future, leads the Panel to conclude that Respondent has registered and used the disputed domain name in bad faith. The Panel recalls that the list of "bad faith" circumstances of registration and use in paragraph 4(b) of the Policy is illustrative, not exclusive.
Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.
The Panel will therefore request the registrar to transfer the domain name <volvoaero.com> to the Complainant.
Based on its finding that the Respondent, volvoaero.com, has engaged in abusive registration and use of the domain name <volvoaero.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <volvoaero.com> be transferred to the Complainant, Volvo Trademark Holding AB.
Frederick M. Abbott
Dated: July 24, 2001
1. The printout submitted by Complainant does not provide the Panel with information adequate to determine the classes of registration, the dates of registration, or the claimed dates of first use of the marks. In the absence of a response by Respondent, the Panel will accept Complainant’s assertion of rights in the Volvo mark on the basis of the limited evidence submitted.
2. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. For purposes of this proceeding, the Panel need not consider whether the disputed domain name would be confusingly similar to Complainant’s "VOLVO" mark standing alone.