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and Mediation Center
Volvo Trademark Holding AB v. Unasi, Inc.
Case No. D2005-0556
1. The Parties
The Complainant is Volvo Trademark Holding AB, c/o AB Volvo, Goteborg, Sweden, represented by Sughrue Mion, PLLC, Washington D.C., United States of America.
The Respondent is Unasi, Inc., Panama City, Panama.
2. The Domain Names and Registrar
The domain names (“Domain Names”) subjects of this Complaint are:
The registrar is iHoldings.com Inc. d/b/a DotRegistrar.com, Colorado, Englewood,
United States of America (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on May 26, 2005, and sent in hard copy to the Center on May 31, 2005.
The Center acknowledged receipt of the Complaint on May 26, 2005.
On May 26, 2005, the Center sent a Request for Registrar verification to the Registrar, with the Registrar replying on May 27, 2005, confirming that the disputed Domain Names were registered with the Registrar and that the registrant contact details were correct.
The Registrar further confirmed on June 7, 2004, to the Center that the disputed Domain Name <volvomasters.com> which was due to expire on June 22, 2005, would remain under registrar lock and be automatically renewed by the Registrar at the expiry date with the winning party paying the corresponding renewal fees upon finalization of the proceeding.
On June 7, 2005, the Center requested Complainant to send copy a of the Complaint to the Registrar in accordance with the Supplemental Rules, paragraph 4(b). The same day, Complainant sent an electronic copy of the Complaint to the Registrar.
On June 8, 2005, the Center satisfied itself that the Complaint was in compliance with all formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the 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 above, the Center issued on the same day a Notification of Complaint and Commencement of Administrative Proceeding to Respondent and sent this notification to Respondent by email, fax and by courier. The administrative proceeding commenced accordingly on June 8, 2005, and the Center set the date of June 28, 2005 as the due date for filing a response to the Complaint in accordance with paragraph 5(a) of the Rules and the Supplemental Rules.
Respondent failed to reply to the Complaint and the Center issued accordingly on July 5, 2005 a Notification of Respondent Default.
On July 15, 2005, the Center issued a Notification of Appointment of Administrative Panel informing Complainant and Respondent that it had appointed Dina Founes as the sole panelist (the “Panel”) in this case following Complainant’s request electing a single member Administrative Panel to decide on this dispute. The Panel found that it is properly constituted, and submitted to the Center its Statement of Acceptance and Declaration of Impartiality and Independence in compliance with paragraph 7 of the Rules.
In accordance with the paragraph 11 of the Rules, the language of proceeding
shall be in English.
4. Factual Background
Complainant is the worldwide owner of the trademark and service mark VOLVO which is registered alone and in combination with other words and/or designs and is extensively used by Complainant throughout the world to designate all kinds of vehicle ranging from cars to trucks including buses and for various other associated products and services.
The VOLVO mark has been used by Complainant and its predecessors since 1927. Complainant is also using the word “Volvo” as part of its company name.
Complainant submitted, in support of its Complaint against Respondent, a list and copies of its numerous US trademark registrations (Exhibit A and B).
On June 22, 2003, Respondent registered the disputed domain name <volvomasters.com> with the Registrar.
Respondent registered three other domain names as follows: <volvogroup.com> on January 25, 2004, <volvoautomobile.com> on December 31, 2004, and <vlovo.com> on January 18, 2005, with the same Registrar.
Respondent has also been found to be the owner of numerous domain names in relation to websites displaying sponsored links to third parties commercial websites and that Respondent has a history of UDRP proceedings for undue registrations under the name of Unasi, Management Inc. (which has been evidenced by Complainant as being the same entity as Unasi, Inc.) of third parties’ prior trademarks as domain names.
Uncovering the registration of the disputed Domain Name <volvomasters.com> by Respondent, a cease and desist letter was sent by Complainant through its authorized representative on March 14, 2005, requesting Respondent to transfer the disputed Domain Name to Complainant. A copy of the cease and desist letter has been attached to the Complaint.
Respondent replied electronically the same day to Complainant’s representative agreeing to transfer the disputed Domain Name to Complainant if the latter accept paying the sum of US $135.00.
On March 21, 2005, Complainant’s representative informed Respondent that only the out of pocket expenses incurred by Respondent in registering the Domain Name at issue would be paid by Complainant.
On March 22, 2005, Respondent reiterated its initial offer to Complainant.
As a result, and considering the registration by Respondent of three other
disputed Domain Names by Respondent including the VOLVO mark, Complainant decided
to submit the Complaint to the Center.
5. Parties’ Contentions
The Complainant first asserts that further to its long and extensive use of the VOLVO mark throughout the world for vehicles, aerospace equipments, and for a broad range of other related products, the word mark VOLVO has gained notoriety over the years and become a worldwide renowned trademark.
Complainant further contends that:
1) In respect of the confusing similarity between the disputed Domain Names and the VOLVO trademark:
The registered Domain Names <volvomasters.com>, <volvogroup.com> and <volvoautomobile.com> are identical or at least confusingly similar to the VOLVO trademark in which Complainant has rights as each of the Domain Names at issue wholly incorporates the VOLVO trademark, and the mere adding of the generic word such as “masters”, “group” or “automobile” is not sufficient to distinguish the disputed Domain Names from Complainant’s renowned trademark VOLVO. As for the <vlovo.com> disputed Domain Name, Complainant contends that Respondent had intentionally used a spelling variation of the word mark VOLVO engaging in the rising practice of “typosquatting” with the objective to take advantage of Internet users mistyping Complainant’s mark VOLVO when trying to access Complainant’s official websites in order to attract them to its own website(s).
2) The Respondent has no rights or legitimate interests in respect of the Domain Names given that:
- At the time Respondent selected “Volvo” as part of its Domain Names, it was under constructive notice of Complainant’s trademark rights under Section 22 of Lanham act, 15 U.S.C -1072, and as a result Respondent cannot conceivably claim that it was not aware of Complainant’s famous trademark VOLVO or that this trademark is not exclusively owned by Complainant.
- Respondent is not authorized by Complainant to register nor to use the VOLVO mark as part of the disputed Domain Names.
- It is obvious that Respondent is not making a legitimate non commercial or fair use of the Domain Names when Respondent’s websites, to which the disputed Domain Names resolve, display sponsored links to third parties’ websites for which Respondent is getting financial compensation. Respondent is thus using the disputed Domain Names for commercial gain.
3) In respect of Bad faith:
The Domain Names have been registered and used by Respondent in bad faith considering that:
- Respondent had no other reason to register the Domain Names at issue but to prevent Complainant from registering such Domain Names and/or to try to sell them to Complainant or for other commercial gain.
- Respondent was obviously aware of Complainant’s prior trademark rights given that the word mark VOLVO has been famous for several decades and that it was under constructive notice of the VOLVO trademark by virtue of Section 22 of Lanham act, 15 U.S.C, 1072, and therefore the use of the Domain Names at issue is to attract Internet users to its websites in order to generate income.
- Respondent is engaged in the business of domain name warehousing considering the numerous domain names registered and used under its name and containing third parties’ trademarks as shown in Exhibit (I) of the Complaint, and the fact of registering four domain names incorporating Complainant’s famous mark VOLVO further evidences such bad faith. Furthermore, Respondent has been involved in six prior UDRP proceedings where the disputed domain names were finally transferred to the trademarks owners (Exhibit O).
- Respondent offered to sell the <volvomasters.com> Domain Name to Complainant, following a cease and desist letter issued by Complainant, which has been annexed to the Complaint, at the price of US $135.00 exceeding the reasonable out of pocket expenses normally incurred for registering the disputed domain name; such acts being additional factors supporting Respondent’s bad faith.
- Respondent fails to demonstrate a legitimate use of the disputed Domain Names since the disputed Domain Names resolve only and exclusively to web pages posting sponsored links listing a great number of external websites with the purpose of taking advantage of the fame of the VOLVO mark so as to attract and then re-route Internet users to other websites with the same line of business as Complainant and generate accordingly profitable revenues to Respondent from the sponsored links.
- registering a domain name with a spelling variation as it is the case with the disputed domain name <vlovo.com> is known as ‘typosquatting’ and indicates Respondent’s bad faith so as to attract confused Internet users ignoring the correct spelling of Complainant’s mark to its unrelated commercial websites.
Respondent failed to reply to the Complaint, and is therefore in default.
6. Discussion and Findings
In order to obtain the transfer of the disputed domain names, Complainant should demonstrate, in accordance with the Policy, paragraph 4(a), that:
(i) The registered domain name is identical or similar to the trademark or service mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in the domain name.
(iii) The respondent has registered and used the domain name in bad faith.
A. Identical or Confusingly Similar
Complainant is the worldwide owner of the word mark VOLVO and derived marks containing this word in combination with other elements and has been using this brand for over 75 years to designate all kind of vehicles and other related products and services throughout the world. The word mark VOLVO is registered in various countries all over the world including the United States of America.
A list of the US trademark registrations for the word mark VOLVO has been annexed as Exhibit (A) to the Complaint, and copies of the VOLVO trademark registrations in the United States of America have been annexed as Exhibit (B) to the Complaint.
The word “Volvo” is also used by Complainant as part of its company name since at least 1935 when AB Volvo was introduced on the Stockholm stock exchange.
Complainant has provided and listed various prior WIPO panelists’ decisions
accepting and confirming that the word mark VOLVO constitutes one of the most
famous marks worldwide. Among these decisions, see Volvo Trademark Holding
AV v. Roger Nichols, WIPO Case No. DTV2001-0017,
and see also Volvo Trademark Holding AB v. Soeren Groenlund, WIPO
Case No. DNU2002-0003. The Panel shares the views of such reputable panelists
in that the trademark VOLVO is certainly to be considered a famous trademark
in view of the extensive and worldwide use by Complainant and Complainant’s
predecessors since 1927 and in the United States of America since 1950 of the
word mark VOLVO to designate a wide range of “Volvo” vehicles and
other products including airplane components and rocket engines and many other
goods and services; such notoriety has been strengthened over the years considering
the excellent proven quality attached to Complainant’s products bearing
the VOLVO mark, and accordingly this trademark has become today indubitably
famous and universally renowned.
The Panel is therefore satisfied that Complainant has duly established its exclusive and significant rights in its trademark and service mark VOLVO.
Assessing whether the disputed domain names are identical or confusingly similar:
1) in respect of the disputed domain name <vlovo.com>:
Having confirmed the notoriety status of the VOLVO mark, the Panel finds that the only difference between the disputed domain name <vlovo.com> and Complainant’s trademark VOLVO is that the second letter and third letter were inversed. Therefore, the disputed Domain Name is not identical to Complainant’s trademark VOLVO.
However, taking into consideration (1) the field of activities to which both the disputed Domain Name and Complainant’s trademark apply (for vehicles and associated products and services), (2) the similar pronunciation and visual impression of “vlovo” and “volvo”, and (3) the fame of the VOLVO trademark, the Panel finds that such alteration in the domain name’s spelling (switching letters) is not sufficient to set aside the similarity between the Domain Name <vlovo.com> and Complainant’s trademark VOLVO, and cannot therefore significantly differentiate it from Complainant’s trademark VOLVO which remains very close visually and phonetically to the disputed domain name <vlovo.com>.
The Panel believes further that Respondent has intentionally misspelled Complainant’s
trademark in order to attract the flow of Internet users who have mistyped Complainant’s
URL address enabling Respondent accordingly to increase the traffic to its website
“www.vlovo.com” and derive more revenues as a result. Such practice
is known as “typosquatting” and has been clearly condemned in various
panelists’ decisions. See Nasdaq Stock Market, Inc. v. Nsdaq.com, Nasdq.com
and Nasaq.com, WIPO Case No. D2001-1492;
the only difference being in each case the lack of only one letter. Quite clearly
respondents have sought to take advantage of Internet users typing an incorrect
address when seeking to access complainant’s website, a practice dubbed
“typosquatting”. See also Verisign, Inc. v. Onlinemalls,
WIPO Case No. D2000-1446; respondent appears
to have employed minor misspellings of complainant’s mark to take bad
faith advantage of spelling errors made by Internet users while attempting to
enter complainant’s Internet address on their web browsers… the
panel determines that the disputed domain names <veresign.com> and <verasign.com>
are confusingly similar to VERISIGN in the sense of paragraph 4(a)(ii) of the
Accordingly, the Panel finds that the domain name <vlovo.com> is indeed confusingly similar to Complainant’s word mark VOLVO in accordance with paragraph 4(a)(i) of the Policy.
2) in respect of the disputed domain names <volvoautomobile.com>, <volvogroup.com>:
The two domain names in dispute encompass wholly the word mark VOLVO which constitutes in the Panel’s opinion the sole relevant and distinctive element within the disputed Domain Names. The second elements consisting of the words “automobile” and “group” in both Domain Names at issue represent only generic or descriptive words with no legal significance or relevancy whatsoever; e.g. in the first domain name, the word “automobile” refers only to the products to which the corresponding disputed website relates, and in the second domain name the word “group” may refer to Complainant’s different business entities implying that Respondent’s websites “www.volvoautomobile.com or “www.volvogroup.com” are official websites or are endorsed or belong to Complainant.
Furthermore, VOLVO is a well-known trademark worldwide, and as such the likehood of confusion in the public’s mind between the disputed Domain Names and Complainant’s trademark VOLVO is greater.
As a result, Internet users may wrongfully assume that both disputed domain names belong to Complainant and accordingly the Panel finds that both disputed domain names <volvoautomobile.com> and <volvogroup.com> are confusingly similar to Complainant’s trademark VOLVO which remains the predominant and central element within these contested Domain Names.
See Toyota France and Toyota Motor Corporation
v. Computer Brain, WIPO Case No. D2002-0002;
the domain name is confusingly similar to complainant’s trademarks, because
within the disputed domain name, there is no doubt that the predominant element
is “Toyota” which is distinctive and eligible for protection per
se and clearly isolable within the combination <toyota-occasions.com>.
See also, Parfums Christian Dior v. 1 Netpower, Inc., WIPO
Case No. D2000-0022; finding that four domain names that added the descriptive
words “fashion” or “cosmetics” after the trademark were
confusingly similar to the trademark, See also Sociйtй des Produits Nestlй
SA v. Myongjin Kim, WIPO Case No. D2005-0509;
a domain name that incorporates the trademark NESTLE and the element “nutrition”
is to be considered as confusingly similar to the various trademarks owned by
3) in respect of the Domain Name <volvomasters.com>:
This Domain Name is a combination of 2 word elements; the word mark VOLVO attached to the word “masters”; such combination referring to the sporting golf event taking place in Spain and known as the “Volvo Masters” which is sponsored regularly by Complainant.
In the Panel’s view, the fact of combining the trademark VOLVO with the word “masters” does not obliterate the distinctiveness of Complainant’s trademark which remains the strong element in such combination, the word “masters” referring to the Masters golf sporting event to which it applies and which is organized by the reputable PGA Tour tournament organization.
The Panel considers that Respondent’s objective registering the Domain Name <volvomasters.com> is to entertain the confusion in the public’s mind and more particularly the Internet users interested in major golf tournaments by using the disputed Domain Name as to attract them into Respondent’s website and redirect them afterwards to other websites selling golf equipment or other golf related services through the displayed sponsored links posted on its conflicted website page with the domain name <volvomasters.com>, and derive as a consequence further revenue by trading on the fame and goodwill of Complainant’s trademark.
The Panel considers that the Domain Name in dispute <volvomasters.com>
is misleading consumers and therefore is confusingly similar to the trademark
VOLVO of Complainant. See Nike, Inc. v. Farrukh Zia,
WIPO Case No. D2000-0167; finding
that including a well-known trademark within a disputed domain name is misleading
and as a result such domain name is to be deemed confusingly similar to Complainant’s
B. Rights or Legitimate Interests
Respondent has failed to respond to the Complaint, and therefore did not submit any evidence demonstrating a legitimate use of the disputed Domain Names.
Based on the submissions made by Complainant, the
Panel notes that Respondent is not related to Complainant’s business and
holds neither title nor any sort of permission or authorization from Complainant
for the use of the word mark VOLVO as part of its Domain Names. The Panel notes
also that Respondent is not using the incriminating websites to offer its own
products or services, but rather to divert Internet users, who are potential
clients of Complainant and therefore part of the latter’s goodwill, through
sponsored links displayed on its sites to other websites unrelated to Complainant’s
official websites and selling similar products and services to those of Complainant
under different brands. Respondent’s use of the Domain Names in dispute
is intentionally misleading on-line consumers by re-directing them to other
websites with the exclusive intention to get profits from such diversion. Such
abusive use of the word mark VOLVO by Respondent which clearly harm Complainant’s
business and violates its trademark rights does not establish legitimate rights
or interests of Respondent in the disputed Domain Names. See Volvo trademark
Holding AB v. Soeren Groenlund, WIPO
Case No. DNU2002-0003, respondent has nothing to do with complainant and
complainant’s business, and there are no indications whatsoever that respondent
would have bona fide interests in relation to the trademark VOLVO. Thus
the panel finds that respondent has no rights or legitimate interests in the
contested domain name <volvodele.nu>. See also Verisign, Inc. v. Onlinemalls,
supra; respondent’s only demonstrated use of the disputed domain names
has been in connection with redirecting Internet users to websites unrelated
to complainant. Such use is hereafter determined to be in bad faith. Bad faith
use of domain names does not establish rights or legitimate interests in the
names in the sense of paragraph 4(a)(ii) of the Policy.
In view of the above findings, it is obvious that
Respondent’s only reason in registering and using the contested Domain
Names is to benefit from the reputation of the renowned trademark VOLVO and
illegitimately trade on its fame for commercial gain and profit. Such use of
the Domain Names by Respondent can not constitute a bona fide offering
of goods and services. See Bayerish Motoren Werke AG v. Ivan Razin, WIPO
Case No. D2005-0341; the panel believes further that respondent has chosen
the contested domain name <bmwcash.com> to profit from its fame and by
the traffic generated by the likely initial expectations of users to whom he
offers its services, a partnership for generating income from toolbar downloads
and access to services of pornographic nature.
Furthermore, the Panel notes that Respondent is not commonly known as an individual, business or organization under any of the Domain Names at issue.
In light of the above, the Panel considers that none of the circumstances required under paragraph 4(c) of the Policy exist, and concludes that Respondent had no rights or legitimate interests in the disputed Domain Names.
C. Registered and Used in Bad Faith
Based on the evidence submitted in this case, the Panel is of the opinion that Respondent has registered and uses the Domain Names in bad faith as set forth below:
1) Respondent was aware, at the time of registration of the disputed Domain Names, of the prior and exclusive rights held by Complainant on the VOLVO trademark. Complainant’s mark is indeed, as indicated above, widely renowned due to the well established and recognized reputation of “Volvo” products worldwide combined to the fact that the “Volvo” products are extensively marketed and sold worldwide.
2) The Panel also resolves that Respondent’s bad faith is further illustrated by the fact that it was officially informed of Complainant’s rights in the VOLVO mark after receiving a cease and desist letter requesting the transfer of the first spotted disputed Domain Name <volvomasters.com> to Complainant. Respondent failed to comply with such request offering instead, which is a further indication of its bad faith, to sell the disputed Domain Name to Complainant for US $135.00, which is in excess of the out of pocket expenses (US $14.95) incurred by Respondent for the Domain Name’s registration with the Registrar. Although the selling of the Domain Name may not appear to be the primary purpose of registering the Domain Name by Respondent, the Panel is of the opinion that Respondent by this unreasonable offer has been only guided into making again easy profit out of the Domain Name if not by successfully trading on the fame of the trademark through the website, at least by re-selling it to Complainant for an unreasonable sum exceeding by far the Domain Name registration fees paid by Respondent.
3) In Exhibit (H) attached to the Complaint, Complainant has brought to the attention of the Panel that Respondent has registered numerous domain names which incorporate trademarks owned by third parties, and uses them to direct traffic to other commercial websites displaying sponsored links for commercial gain. Complainant contends that Respondent is engaged in the business of warehousing domain names which constitutes further evidence of Respondent’s bad faith and asserts that some of these domain names incorporate third parties’ marks.
The Respondent has been involved in six (6) UDRP disputes
which have condemned Respondent, as evidenced by Complainant in Exhibit O, to
transfer the usurped Domain Names to the legitimate owners of the corresponding
prior trademarks. This demonstrated fact of Respondent’s history in UDRP
proceedings combined with the registration and use by Respondent of the widely
renowned trademark VOLVO within the four (4) disputed Domain Names strongly
supports Respondent’s involvement in domain names warehousing and therefore
Respondent’s bad faith in the present WIPO proceedings. See J.P. Morgan
v. Resource Marketing, WIPO Case No. D2000-0035;
the practice of registering domain names containing the trademarks of other
companies can indicate that the contested domain names were registered and are
being used in bad faith. Ownership of numerous domain names that corresponds
to the names or marks of well-known business entities suggests intent to profit
from the activities of others. See also Nikon, Inc and Nikon Corporation
v. Technilab, Inc WIPO Case No. D2000-1774.
4) Complainant claims that Respondent’s bad
faith is further evidenced when using an incorrect spelling of the mark VOLVO
within the domain Name <vlovo.com>. The Panel agrees with Complainant
and determines in this regard that Respondent has no justified reason to incorporate
a spelling variation in the disputed Domain Name <vlovo.com> whilst the
spellings of the other three Domain Names at issue which have been registered
by Respondent are totally correct. The most plausible explanation to such variation
seems related to Respondent’s attempt to increase its revenues and profits
by additionally targeting those Internet users who mistype or ignore the proper
spelling of the VOLVO mark and directing such confused consumers to different
commercial websites which in return remunerate Respondent for each corresponding
click-through giving access to their sites. Accordingly, the Panel decides that
deliberately using misspelling variation in the disputed Domain Name constitutes
a further factor of Respondent’s bad faith in registering and using the
Domain Name <vlovo.com>. See Sharman
License Holdings, Limited v. IcedIt.com, WIPO
Case No. D2004-0713 in which the panel found that the typosquatting facts
in this proceedings evidenced respondent’s bad faith in registering and
using the disputed domain names. See Nasdaq Stock Market, Inc. v. Nsdaq.com,
Nasdq.com and Nasaq.com, supra; deciding that the Internet and financial
communities would be seriously confused if mistyping <nasdaq.com> would
lead to the megaGo website. In short it is clearly bad faith to register three
domain names that are all clearly misspellings of a world famous trademark.
See also Verisign, Inc. v. Onlinemalls, supra.
5) The Panel considers further that Respondent is merely using the disputed
Domain Names which include entirely the famous VOLVO trademark as an appeal
brand in order to attract the interested on-line consumers in Complainant’s
products who would plausibly assume that Respondent’s websites using the
Domain Names at issue belong to or are endorsed by Complainant and then encourage
consumers to divert to third parties websites through the displayed sponsored
links forming the only content of its conflicted websites. Respondent, by using
the disputed Domain Names, is intentionally misleading the consumers and confusing
them so as to lure them to other websites making them believe that the websites
behind those links are associated or recommended by Complainant. As a result,
Respondent may generate unjustified revenues for each click-through by on-line
consumers of the sponsored links. Respondent is therefore illegitimately capitalizing
on the VOLVO trademark fame. Such finding indicates Respondent’s bad faith
in the registration and use of the disputed Domain Names. See Philip Morris
Incorporated v. r9.net, WIPO Case No.
D2003-0004; the disputed domain name links to a website that appears to
be a fabricated “mock-up” of a web page “under construction,”
created for the sole purpose of displaying banners and advertisements. The home
page displays <marlboro.com> in prominent letters, but otherwise is dedicated
to displaying three banner advertisements: (1) a textual and banner advertisement
for Sell.com, Inc., an online classifieds company; (2) a banner advertisement
for <AdultFriendFinder.com> (billing itself in the advertisement as the
“world’s largest sex personals”); and (3) a banner advertisement
for Starluck Casino, an online gambling service. Clearly, the disputed domain
name is being used intentionally to attract users to these other sites, and
thus is evidence of bad faith. See also eBay Inc. v. SGR Enterprises and
Joyce Ayers, supra; finding that since the <ebaylive.com> and <ebaystores.com>
domain names and the EBAY mark are confusingly similar, an Internet user viewing
a website located at such domain address would be likely to assume that the
contested domain names were somehow sponsored by or affiliated with eBay. No
plausible explanation exists as to why SGR and Ayers selected the name EBAY
as part of the disputed domain names other than to trade on the goodwill of
6) The Panel further finds, after visiting third parties’ websites to which the displayed sponsored links on Respondent’s incriminating websites are offering competitors’ products such as ISUZU trucks, BMW cars and many other vehicles under other well-known brands. The Panel considers accordingly that in attracting on-line consumers by using the VOLVO famous brand within the disputed Domain Names in order to re-direct such consumers to other websites promoting and selling competitors’ products is a further strong indicator of Respondent’s bad faith and clearly violates Complainant’s trademark rights in the VOLVO mark.
In this regard, it has been deemed by numerous WIPO
panels that attracting Internet traffic and diverting it to website(s) selling
products of complainant’s competitors by using a domain name identical
or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of
the Policy. See e.g. Edmunds.com v. Ultimate Search, Inc WIPO
Case No. D2001-1319, registration and use of a domain name to redirect Internet
users to websites of competing organizations constitute bad faith registration
and use under the Policy. See also Nikon, Inc and Nikon Corporation v. Technilab,
Inc, WIPO Case No. D2000-1774;
the use of the <nikoncamera.com> domain name for a site that sold Nikon
products and those of its competitors constitute an improper use of complainant’s
mark to attract Internet users to respondent’s site for commercial gain
by creating a likehood of confusion as to source, sponsorship, affiliation or
endorsement of the site. See also National City Corporation v. MH Networks
LLC, WIPO Case No. D2004-0128
in which bad faith was retained for a Domain Name resolved to a website that
included links to mortgage related services which in turns led to a search results
page listing “sponsored links” many of which featured complainant’s
competitors. See also AT&T Corp. v. Azim Hemani, WIPO
Case No. D2003-0634.
In light of all the above findings, the Panel resolves that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likehood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s websites.
The Panel considers, based on all the above elements,
that Complainant has established the bad faith of Respondent in registering
and using the disputed Domain Names in accordance with paragraph 4(b)(iv) of
Considering the foregoing, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Names <vlovo.com>, <volvoautomobile.com>, <volvogroup.com> and <volvomasters> be transferred to Complainant.
Dated: July 29, 2005