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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding AB v. Peter Lambe
Case No. D2001-1292
1. The Parties
Complainant is Volvo Trademark Holding AB, a corporation organised and existing under the laws of Sweden, and represented by Lovells, London, UK.
Respondent is Peter Lambe, Cheshire, UK.
2. The Domain Name and Registrar
The domain name at issue is <volvoexhausts.com>.
The registrar is JOKER.COM (CSL GmbH), Düsseldorf, Germany.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on October 24, 2001, and subsequently in hard copy on November 19, 2001. The WIPO Center sent an Acknowledgement of Receipt of Complaint to the Complainant on October 29, 2001.
On November 5, 2001, a Request for Registrar Verification was transmitted to the Registrar, JOKER.COM. On November 13, 2001, the Registrar confirmed that they were in receipt of the Complaint sent to them by the Complainant and that the domain name <volvoexhausts.com> was registered with them and was in "production" status. The Registrar forwarded at the same time the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the WIPO Center on November 14, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), as approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Supplemental Rules"), in effect as of December 1, 1999.
The Complainant paid on time and in the required amount the fees for a single-member Panel.
On November 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of December 10, 2001, by which the Respondent could file a Response to the Complaint.
On December 12, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the Respondent a Notification of Respondent Default.
On January 4, 2002, the WIPO Center invited Knud Wallberg to serve as a Panelist in the case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Knud Wallberg’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on January 8, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was January 22, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
The Administrative Panel has issued its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, but without the benefit of a Response from the Respondent.
4. Factual Background
The Complainant is a holding company and handles the trade mark affairs of Aktiebolaget Volvo and Volvo Car Corporation throughout the world. Aktiebolaget Volvo and Volvo Car Corporation each own 50 % of the Complainant. The Complainant also makes the Complaint on behalf of Aktiebolaget Volvo and Volvo Car Corporation. 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. The name and mark is also registered in combination with other words in a number of countries. In the UK there are 13 registered trade marks in the name and mark VOLVO, registered in all classes except 10, 13, 15, 19, 23, 29, 30, 31, 32 registered in the name of Aktiebolaget Volvo, which is also the registered proprietor of trade marks of various permutations of the name VOLVO in the UK. The Complainant is the registered proprietor of the trade mark "Volvo Ocean Race 2001-2002".
Of the trade marks held by the Complainant and its associated companies two trade mark registrations are specifically relied upon, being the trade marks in Class 12 which covers vehicles and parts thereof (TM numbers 747361 and 747362). In the US the trade marks in the name and mark VOLVO are registered in the name of Aktiebolaget Volvo and assigned to the Complainant.
In addition, the Complainant and its associated companies own a global portfolio of domain names, including the following relevant domain names (a complete list of the relevant domain names was included as Annex C to the Complaint): <volvo.com>, <volvocars.com>, <volvoaero.com>, <volvo.net>, <volvotrucks.com> and <volvotrucks.co.uk>.
The global Internet marketing strategy of Volvo Car Corporation and Aktiebolaget Volvo is based on "localised" websites under each region's country code top level domain names. This means that every site is adapted to that specific country with regard to language, market and culture, but with consistent design overall. At present Volvo Car Corporation has authorized websites in 40 countries using seven different alphabets and 22 languages. This approach is also adopted by Aktiebolaget Volvo for trucks and buses. Volvo uses these web sites to promote its services and to provide information about itself to its clients and to the general public.
The domain name in dispute, <volvoexhausts.com>, was registered on 15 February 2001 by Peter Lambe, the Respondent in this matter.
The Complainant's solicitors have undertaken various domain name searches, and these search results, which were enclosed as an Annex to the Complaint, indicate that the Respondent has registered numerous domain names incorporating the names and/or brands of other companies with the "exhausts" suffix.
The Respondent Peter Lambe is a director of the UK registered company Dinex Exhausts Limited. The Domain Name pertains to one web page advertising Dinex Volvo Exhausts. A copy of this page was attached as an Annex to the Complaint. The page is headed by the title "Volvo Exhausts" featured in a truck device and features a large photograph of a Volvo truck with an exhaust and a close up of an exhaust. Underneath the lorry appears an invitation to visit the web site <www.dieselemissions.org> and the device mark of the ISA 9001 BVQI Quality Standard. The text describes the commercial vehicle product range that Dinex supplies of Volvo truck and bus/coach parts, with the word VOLVO in bold blue writing. As well as indicating the supply of a range of exhausts, the wording also promotes the manufacture of diesel particulate emission solutions. At the bottom of the home page are the words "Europe's premier exhaust manufacturer" and the page contain links to other pages.
It is not possible to order an exhaust directly from the Domain Name site. The visitor has to link to the <www.commercialexhausts.com> website through the other exhaust product links or main Dinex website. The <volvoexhausts.com> website comprises only of one page and it is not possible to view any products, order any products, or make any enquiries without linking to other websites.
The <commercialexhausts.com> website repeats much of the information shown on the <volvoexhausts.com> website and to order an exhaust, it is necessary to connect to <www.dinexexhausts.com>, which links directly to <www.dinex.dk>.
The "About Dinex" page describes the Dinex company as being based in Denmark and the 100% owned distribution companies in UK, Germany, Latvia, Italy and the partly owned ETMA distribution company in France.
Dinex UK is described as a sister company of Dinex A/S in Denmark, and sells exhaust systems for trucks and buses on the UK market and Ireland. There is no company registered at Companies House with the name "Dinex UK". The UK Companies House information lists "Dinex Exhausts Limited" as the UK registered company. A copy of the UK Companies House information and website information was supplied as an Annex to the Complaint.
5. Parties’ Contentions
The following is taken from the Complaint.
The Respondent infringes the Complainant’s rights in the trade marks (as set out above). The Domain Name consists of the Complainant’s trade mark "VOLVO" to which the word "exhausts" is added. The ability of the word "exhausts" to distinguish the Domain Name from the trade mark of the Complainant is so limited as to be negligible in practical terms. The Domain Name is, therefore, confusingly similar to the "VOLVO" trade mark (see Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102). The Domain Name further incorporates part of and is confusingly similar to the Complainant’s other trade marks. Copies of the Complainant's marks were found in Annex B of the Complaint.
The trade mark is considered a well-known and/or famous trade mark and is one of the best known automobile and vehicle trade marks in the world today (see Volvo Trademark Holding v Cup International Limited (WIPO Case No. D2000-0338), Volvo Trademark Holding AB v Eurovendic (WIPO Case No. DNU2001-0001) and Volvo Trademark Holding AB v volvoaero.com (WIPO Case No. D2001-0723)). In Volvo Trademark Holding AB v Eurovendic (WIPO Case No. DNU2001-0001) the Panel states "The Panel considers that, without doubt, the mark VOLVO is to be considered as a famous mark under trademark law on the basis of its worldwide reputation in connection with automobiles and other vehicles."
The Respondent does not have any legitimate interest or right in the name "VOLVO". The Respondent is not commonly known by these words nor the Domain Name. The Respondent is a director of a company that supplies a wide range of exhausts, of which a small percentage are able to be used as replacements in the trucks and buses manufactured by Aktiebolaget Volvo and its associated companies, however this does not give the Respondent a right in respect of a domain name where the Respondent has a portfolio of suitable and appropriate domain names. Further, the Respondent is not associated, connected with or authorized by the Complainant in any way and never has been.
The Domain Name was registered and is being used in bad faith. See the decision in GA Modefine SA v AES Optics (WIPO Case No. D2000-0306) for the principle that bad faith may be presumed in the registration and use of the domain name consisting wholly or partly of the famous trademark of a third party.
The Respondent is the registered owner of various other domain names incorporating the names of other companies and/or brands of other companies, for example <renaultexhausts.com>. Panel decisions have found that the ownership of numerous domain names which are the names or marks of well known business entities suggests an intent to profit from the activities of others (see J.P. Morgan v. Resource Marketing (WIPO Case No. D2000-0035)).
This shows that the Respondent falls squarely within the activities considered to be of bad faith in the decision of J.P. Morgan v. Resource Marketing.
Further it should be noted that the domain name incorporates the Community Trade Mark application number 1866623 "Exhaust" or permutations of the trade mark, which are not owned or assigned to the Respondent.
By using the Domain Name the Respondent has intentionally attempted to attract for commercial and/or financial gain internet users to the Domain Name site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's web site.
The Respondent is not making fair use of the Domain Name in connection with a bona fide offering of goods or services, following the European Court of Justice decision in BMW v Deenik ECJ Case C-63/97.
Further it is not fair use to use the trade marks when the products offered by the Respondent's company are manufactured by the Respondent's company or an associated company (the "Dinex group") and are not connected to the Complainant, other than through the fact that the products may fit the trucks or buses and are used for replacements or repairs.
The Respondent's company does not make it clear that the Dinex group manufactures the parts in order to fit a vehicle manufactured by the Complainant's group of companies. The Dinex group is not the only manufacturer of exhausts, which can be fitted to Volvo vehicles.
Furthermore it is not a fair use to create an element of confusion as to the manufacturer of the product or to which vehicle they relate.
To summarize, the Respondent is infringing the Complainant’s registered trade marks, it has no legitimate interest or rights in respect of the Domain Name and it registered and is using the Domain Name in bad faith.
As mentioned above in section 3, the Respondent has not filed a Response in accordance with the Rules, Paragraph 5.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainants mark VOLVO is registered and has been used in numerous countries around the world including the UK. In addition the mark must be considered to be a well-known mark.
The domain name <volvoexhausts.com> contains the word VOLVO in full as the first and dominant part of the domain name. To this part is added the descriptive word "exhausts" and the suffix ".com". Under these circumstances the domain name must be considered to be confusingly similar to the trademark VOLVO in which the Complainant has rights.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name.
It is clear from the copies (enclosed with the Complaint) of the web sites connected to the Respondent’s business activities, that he is engaged in the business of the manufacture and sale of exhausts that inter alia can be used for VOLVO cars and vehicles. It is a well-known principle of trademark law 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 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.
The prerequisites of the Policy, Paragraphs 4(a)(ii) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.
Given the nature of the Respondent’s business and the fame of the VOLVO mark, it is clear that Respondent was fully aware of the existence of the Complainant and its affiliated companies and of their rights to the trademark VOLVO at the time he registered the domain name.
It is also significant that the Respondent is actively using the website to promote his own exhaust products and services. This indicates an attempt to divert Internet users looking for VOLVO-endorsed products or services to the Respondent’s website.
The Respondent has no reason to use the domain name other than to attract Internet users by suggesting that the Complainant is associated with the Respondent or has endorsed the Respondent’s products. This is an attempt to misappropriate the Complainant’s reputation for commercial gain.
The Panel has also noted that Respondent has registered several domain names that incorporate the trademarks of other car producers in the same manner as in this case.
The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The above mentioned considerations and views are supported by several previous decisions under the UDRP. In addition to those referred to by the Complainant the Panel can also refer to some very recent decisions such as WIPO Case D2001-1176 <nokiafaceplates.com> and <nokiaringtones.com> and WIPO Case D2001-1291 <philipslighting.net>.
In view of the above circumstances and facts the Panel finds that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent does not have any rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
Consequently the Panel decides that the domain name <volvoexhausts.com> be transferred to the Complainant.
Dated: January 20, 2002