Volvo Trademark Holding AB v. Volvoaero.com

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

[1]. (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

A. Complainant

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.

B. Respondent

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

[2]. 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" [3].

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.

7. Decision

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

Sole Panelist

Dated: July 24, 2001

Footnotes:

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.

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