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WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volvo Trademark Holding AB v. Eurovendic (erik schroder)

Case DNU2001-0001

 

1. The Parties

Complainant is Volvo Trademark Holding AB, represented by Cynthia Clarke Weber, Sughrue, Mion, Zinn, MacPeak & Seas, PLLC, 2100 Pennsylvania Avenue, N.W. Washington, DC 20037-3202, United States.

Respondent is Eurovendic (erik schroder), Rosengatan 5 b, 41 310 Göteborg, Sweden.

 

2. Domain Name and Registrar

The domain name at issue is <volvooceanrace.nu>. The Registrar is The .NU Domain Ltd, Sherborn, Massachusetts, United States

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant by e-mail on February 16, 2001, and in hard-copy form on February 19. On February 22 the Center issued an Acknowledgement of Receipt of Complaint.

On March 7, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN. The notification to Respondent was effected by Post/Courier with enclosures and by fax and e-mail without enclosures. The faxes and the e-mail did not go through. The delivery by Post/Courier was effected under DHL Shipment Number 9697773735 but was returned due to unknown company and unknown person.

On February 28, 2001, the Center received a Registrar Verification. According to that Verification

- the Registrar had received a copy of the Complaint sent by Complainant,

- the domain name at issue is registered with .NU Domain Ltd,

- Respondent is the current Registrant of the domain name,

- The domain name at issue is <volvooceanrace.nu> which is in active status, and had as incept date October 3, 1998.

- Domain name owner and Billing Contact is "erik schroder, eurovendic@hotmail.com, eurovendic, rosengatan 5 b goteborg, goteborg 41310 se" with voicemail 46317049480 and fax number 46317738459.

- Technical contact is "sysadm@mlwebrouter.com, The .NU Domain Ltd, Box 352 Sherborn, MA 01770-0352 US.

- Name Servers are: Name Server 1: ns0.instantweb.nu 208.36.200.8, Name Server 2: nsl.ispc.org 207.106.7.7, and Name Server 3: ns2.ispc.org 209.124.64.11.

- The domain name at issue is parked on .NUDomainґs servers but is not using either its email or webforwarding services,

- The Uniform Domain Name Dispute Resolution Policy applies to the domain name

- The current status of the domain name is Active.

Having received no Response from Respondent, the Center issued, on March 29, 2001 a Notification of Respondent Default, which was notified to the Parties by e-mail.

The Center then invited Mr. Henry Olsson to serve as Sole Panelist and received, on April 24, 2001, Mr. Olssonґs Statement of Acceptance and Declaration of Impartiality. On April 25 the Center appointed Mr Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was duly communicated by e-mail to the Parties. The Projected Decision Date was May 8, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

 

4. Factual Background

Complainant is a corporation organised and existing under the laws of Sweden and has its principal place of business c/o Volvo, in Göteborg, Sweden. Complainant handles the trademark affairs of AB Volvo and Volvo Car Corporation throughout the world. Each one of those own 50 % of Complainant.

The present Volvo ABґs predecessor was founded in 1915 and began the construction of VOLVO cars in 1927 and of trucks in 1928. In 1934 the manufacturing activities were expanded to include bus chassis and marine engines. In 1935 AB Volvo was introduced on the Stockholm Stock Exchange.

Respondent has not submitted any information about its activities.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name, to the jurisdiction of United States Court for Massachusetts, where the Registrar is located.

 

5. Parties Contentions

A. Complainant

General Background

As a general background Complainant indicates that Complainantґs predecessors have been selling cars, trucks, buses and many other products under the VOLVO trademark throughout the world for many decades from the 1920s and onwards. For example the VOLVO mark has been used on cars and other products in the United States since the 1950s. The VOLVO mark either alone or in combination with other terms and designs is registered extensively as a trademark and service mark in the United States and elsewhere throughout the world. Complainant contends that there are 18 living trademark registrations for the VOLVO mark alone in the United States for a number of goods and services; Complainant has submitted a list (Exhibit A) of the US trademark registrations for that mark. Complainant contends that, by virtue of its long and extensive use, the VOLVO mark has become famous and is one of the best-known automobile and vehicle trademarks in the world to-day; it is well recognized as a symbol for the highest quality.

Complainant indicates that Volvo AB purchased, in 1998, the rights to the Whitebread Round the World Race - which is known as the premier world ocean race - and became thus a major sponsor in the world of sailing. The name was then changed to "Volvo Ocean Race". That race will begin in September 2001. In an effort to publicize the race Volvo maintains a website at www.volvooceanrace.org which website is available and displays prominently the name "The VOLVO OCEAN RACE."

According to the information submitted by Complainant (Exhibit B), it is the owner of a United States trademark application for the mark VOLVO OCEAN RACE (Serial number 75/509,069) filed on June 25, 1998, for, inter alia, printed matter, clothing etc. in the field of sailing and sports etc. Furthermore, it is the owner of a United States trademark application for the mark VOLVO OCEAN RACE 2001-2010 filed on March 24, 1999, for cover bags and other products in international class 18 (Exhibit C).

Complainant contends that since the renaming of the Whitebread Race in 1998, Volvo has used the mark VOLVO OCEAN RACE extensively in connection with publicity and with goods and services relating thereto.

Complainant contends that by virtue of Complainantґs long use of the VOLVO trademark, of the renown of Complainantґs goods and services and the highly publicised sale of the Whitebread Race , Complainantґs marks VOLVO and VOLVO OCEAN RACE are associated exclusively with Complainant; by virtue of the nature of Complainantґs goods and services the reputation associated with Complainantґs marks are excellent.

Complainant furthermore contends that Complainantґs VOLVO mark has been found to be famous in a previous case where the domain name <the volvooceanrace.com> was transferred to Complainant.

According to Complainant, Respondent registered the domain name at issue on

October 3, 1998. and has submitted a copy of the information available from the website associated with it.

Identity or Confusing Similarity

Complainant contends that the domain name at issue is identical to and confusingly similar to Volvoґs trademark and service mark VOLVO OCEAN RACE.

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the domain name due to Volvoґs continuous and prior long use of its marks VOLVO and VOLVO OCEAN RACE.

Registration and Use in Bad Faith

Complainant contends that Respondent registered the domain name at issue in bad faith as there is no justification for Respondentґs registration of the domain name other than to try to sell it to Complainant or divert the public from Complainantґs website. Upon information and belief, Respondentґs registration and use of Complainantґs mark is intended to, and does, and will, confuse the relevant purchasing public into believing that Complainant maintains, or has approved or endorsed or is the sponsor of, or is otherwise associated with any website that Respondent may have at the domain name at issue.

Complainant furthermore contends that Respondent contacted it by e-mail on

September 15, 2000, offering to sell the domain name at issue to Complainant (Exhibit E). That e-mail, from "Eric" to a person obviously associated with Volvo states: "Please this is not hostile! I have received an offer for volvooceanrace.nu before I sell it I would like to know if you are in the market." Upon information and belief Respondent has made no use of the domain name at issue and registered it solely for the purpose of selling it to Complainant. Complainant has submitted a copy of the e-mail in question. According to Complainant, Respondent has made no use of the domain name since its registration in October 1998 but is simply "parking" on the name in order to sell it to the highest bidder.

Complainant contends that, upon information and belief, Respondent chose the domain name at issue with full knowledge of Complainantґs rights in it and was under constructive notice of Complainantґs famous VOLVO mark by virtue of Section 22 of the US Lanham Act. It is, according to Complainant, inconceivable that Respondent was unaware of the VOLVO mark, which has been famous around the world for decades by virtue of Complainantґs long, exclusive and ubiquitous use of it. Nor could, according to Complainant, there have been anything than bad faith in Respondentґs selection of the domain name at issue as there is no reason to add "oceanrace" to the VOLVO mark unless there is awareness of Complainantґs use of VOLVO OCEAN RACE. Upon information and belief, the acts have been committed with the intent and purpose of creating a likelihood of confusion and appropriating and trading upon Complainantґs considerable goodwill and reputation

By the acts alleged by Complainant, Respondent has, in the view of Complainant, infringed upon Complainantґs trademarks and service marks VOLVO and VOLVO OCEAN RACE; Respondent has thereby caused, and will cause, Complainant serious and irreparable damage and will continue to do so, and even expand those damaging acts unless the domain name is transferred to Complainant.

Remedies Requested

Complainant requests that the domain name at issue be transferred to Complainant

B. Respondent

Respondent who has, according to the documentation available in the case, been communicated the Complaint and the Notification of Respondent Default, has not submitted any Response and is in Default.

 

6. Discussion and Findings

General observations

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles that it deems applicable.

In the case of a Default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draws such inferences therefrom as it considers appropriate. In this case, the Panel notes that the Center exhausted all means of communication required under the Rules but that the Complaint sent by Complainant seems to have been received by Respondent as Complainant has not indicated otherwise. Consequently the Panel considers that Respondent has been notified of the Complainant as required under the Rules. Respondent has, however, not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions made by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

According to the uncontested statement by the Registrar, the Uniform Domain Name Dispute Settlement Policy applies to the domain name at issue.

Paragraph 4.a of the Policy directs that Complainant must prove each of the following:

- at the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,

- That Respondent has no rights or legitimate interests in the domain name, and

- That the domain name has been registered and is being used in bad faith.

In the following parts of this Decision, the Panel discusses each of those elements.

Identity or Confusing Similarity

In this respect, Complainant has, according to Paragraph 4.a.(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

The domain name at issue is <volvooceanrace.nu>.

Complainant is, as established through the list of registrations submitted by Complainant, the owner of 18 United States registrations of the trademark and service mark VOLVO for a number of goods and services and also the owner of two trademark applications relating to the marks VOLVO OCEAN RACE and VOLVO OCEAN RACE 2001-2010.

The Panel considers that, without any doubt, the mark VOLVO is to be considered as a famous mark under trademark law on the basis of its world-wide reputation in connection with automobiles and other vehicles.

The Panel furthermore considers that the differences between the domain name at issue and Complainantґs trademarks are minor and that it evident that the Respondent’s domain name is confusingly similar to Complainantґs trademarks.

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph 4.a.(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.

From the documentary evidence submitted by Complainant – which has not been contested or commented upon by Respondent - it appears that the domain name at issue was registered in October 1998, i.e. the same year as when Volvo AB purchased the rights to the Whitebread Round the World Race and renaming it to Volvo Ocean Race. The website documentation submitted by Complainant furthermore indicates that Respondent does not seem to have used the domain name at issue for any activity of its own. Respondent has not contested Complainantґs allegation that Respondent has in fact no rights or legitimate interests in the domain name at issue, in view also of Volvoґs continuous and long prior use of its marks VOLVO (and VOLVO OCEAN RACE).

On the basis of these circumstances the Panel concludes that it is established that in fact Respondent has no rights or legitimate interests in the domain name at issue.

Registration and Use in Bad Faith

In this respect, Complainant has, according to Paragraph 4.a.(iii) of the Policy to prove that the domain name has been registered and is being used in bad faith.

In this respect Complainant contends that Respondent has made no use of the domain name but has registered it solely for the purpose of selling it to Complainant and that Respondentґs non-use of the domain name has occurred since its registration the same year as Volvo AB purchased the Whitebread Ocean Race rights. To support its contentions, Complainant has submitted a copy of an e-mail where Respondent offers to sell the domain name to Complainant. Furthermore, Complainant contends that the domain name was registered with full knowledge of Complainantґs rights in the confusingly similar trademarks and service marks owned or applied for by Complainant and that where would be no reason to add "oceanrace" to the VOLVO mark unless there was awareness of Complainantґs use of VOLVO OCEAN RACE.

Respondent has not contested the statements by Complainant nor has it commented upon the documentary evidence submitted by Complainant to support its contentions.

On the basis of the circumstances thus referred to, the Panel concludes that it would in fact be inconceivable that Respondent would not have been aware of Complainantґs trademarks and service marks at the time of the registration of the domain name, the more so as Respondent lives in the same city where Volvo AB has its headquarters and where the activities of the company are certainly very well known. In combination with Respondentґs later failure to make any active use of the domain name, this leads the Panel to the conclusion that the domain name at issue was in fact registered in bad faith. The Panel also considers that Respondentґs failure to make use of the domain name for a substantial period of time amounts to use in bad faith.

On the basis of these considerations, the Panel concludes that it has been established that in fact the domain name at issue has been registered and is being used in bad faith.

Conclusions

On the basis of the foregoing, the Panel considers that Respondentґs domain name is confusingly similar to Complainantґs trademarks and service marks, that it has been proved that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy and in accordance with Complainantґs request, the domain name at issue shall be transferred to Complainant.

 

7. Decision

The Administrative Panel directs that the domain name <volvooceanrace.nu> be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: April 29, 2001.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/dnu2001-0001.html

 

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