Volvo Trademark Holding AB c/o AB Volvo and Volvo Car Corporation and AB Volvo v. CAPITAL FINANCE GERMANY LTD.
Claim Number: FA0905001262747
Complainant is Volvo
Trademark Holding AB c/o AB Volvo and Volvo Car Corporation and AB Volvo (“Complainant”), represented by Anessa
Owen Kramer, of Brooks Kushman, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <najlacnejsievolvo.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 14, 2009.
On May 14, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <najlacnejsievolvo.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@najlacnejsievolvo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <najlacnejsievolvo.com> domain name is confusingly similar to Complainant’s VOLVO mark.
2. Respondent does not have any rights or legitimate interests in the <najlacnejsievolvo.com> domain name.
3. Respondent registered and used the <najlacnejsievolvo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Volvo Trademark Holding AB c/o AB Volvo and Volvo Car Corporation and AB Volvo, is the owner of the VOLVO mark, registered with the Belize Intellectual Property Office (“BELIPO”) (Reg. No. 138,403) and other governmental trademark authorities worldwide. The VOLVO mark is used in connection with the marketing and sales of automobiles, trucks and other vehicle components worldwide.
Respondent registered the <najlacnejsievolvo.com> domain name on January 9, 2009. Respondent is using the disputed domain name to resolve to a Slovakian website identical to Complainant’s website at <volvo.com>. Respondent attempts to pass itself off as an authorized distributor of Complainant, copying content on Complainant’s commercial website and incorporating it in the resolving website at the <najlacnejsievolvo.com> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel concludes that Complainant has established its rights in the VOLVO mark based on its registration of the mark with the BELIPO and other governmental trademark authorities worldwide pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <najlacnejsievolvo.com> domain name is confusingly similar to its VOLVO mark. The disputed domain name incorporates Complainant’s VOLVO mark in its entirety with the addition of a Slovak term that translates to the English phrase “the cheapest” and the affixation of the top-level generic domain “.com.” The Panel concludes that the addition of the generic Slovak term fails to sufficiently alleviate the confusing similarity between Complainant’s VOLVO mark and Respondent’s domain name. See Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum April 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”); see also AmericaOnline, Inc. v. CredoNIC.com, FA 432156 (Nat. Arb. Forum March 2, 2005) (finding <icqespanol.com> is confusingly similar to complainant’s ICQ mark because it merely adds the generic word “espanol,” the Spanish-language word for “Spanish”). Additionally, the Panel concludes that the generic top-level domain “.com” is irrelevant for the purposes of a Policy ¶4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <najlacnejsievolvo.com> domain name is confusingly similar to Complainant’s VOLVO mark.
Complainant has satisfied Policy ¶ 4(a)(i).
Proper analysis of Policy 4(a)(ii) shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a sufficient prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Panel concludes that Complainant has satisfied its prima facie case in these proceedings. Respondent has failed to respond to the allegations against it. From this failure, the Panel finds that Respondent has failed to satisfy its burden of showing rights or legitimate interests in the <najlacnejsievolvo.com> domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel now chooses to examine the record to determine whether Respondent has any rights or legitimate interest in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use its VOLVO mark. The WHOIS information lists the registrant as “CAPITAL FINANCE GERMANY LTD.,” which suggest that Respondent is not commonly known by the <najlacnejsievolvo.com> domain name under Policy ¶ 4(c)(ii). The Panel concludes that the WHOIS information, together with the lack of information in the record to the contrary, establishes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The disputed domain name is being used to resolve to a
Slovakian website that looks identical to Complainant’s <volvo.com>
website. Complainant alleges that
Respondent is attempting to pass itself off as an authorized dealer of
Complainant’s goods. The Panel concludes
that such use does not constitute a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(a)(i) or (iii),
respectively. See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent
attempts to pass itself off as the complainant online, which is blatant
unauthorized use of the complainant’s mark and is evidence that the respondent
has no rights or legitimate interests in the disputed domain name); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008)
(finding the respondent’s use of the disputed domain name to pass itself off as
the complainant in order to advertise and sell unauthorized products of the
complainant was not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), or a legitimate noncommercial or
fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent’s use of a
confusingly similar domain name, which resolves to a commercial website
mimicking Complainant’s website and purporting to sell authorized versions of
Complainant’s goods likely disrupts Complainant’s business. See
Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see
also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508
(Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX
mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant further alleges that bad faith registration and use under Policy ¶ 4(b)(iv) can be inferred based on Respondent’s use of a confusingly similar domain name to attract Internet users to its website that copies Complainant’s website. The Panel presumes that Respondent is profiting from such use by marketing purported authentic versions of Complainant’s products. Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products; see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of bad faith registration and use of a disputed domain name. Therefore, the list of factors under Policy ¶ 4(b) is only illustrative and not exhaustive. Complainant alleges that Respondent has engaged in bad faith registration and use of the <najlacnejsievolvo.com> domain name based on Respondent’s efforts to misrepresent itself as Complainant and provide misleading information to the public under Policy ¶ 4(b). The Panel finds that Respondent’s intent to pass itself off as an authorized distributor of Complainant, mimicking Complainant at the disputed domain name, constitutes bad faith registration and use pursuant to Policy ¶ 4(b). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b) of the Policy.”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant has satisfied Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <najlacnejsievolvo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: June 29, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum