WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding Aktiebolag v. 杨智超 (Zhichao Yang)
Case No. D2020-3507
1. The Parties
The Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Names and Registrar
The disputed domain names <comvolvocarfinancialservices.com>, <myvolvocarfinancialservices.com>, <volvoacrfinancialservices.com>, <volvocaarfinancialservices.com>, <volvocaefinancialservices.com>, <volvocafrinancialservices.com>, <volvocardfinancialservices.com>, <volvocarffinancialservices.com>, <volvocarfianncialservices.com>, <volvocarfibancialservices.com>, <volvocarfiinancialservices.com>, <volvocarfimancialservices.com>, <volvocarfinaancialservices.com>, <volvocarfinabcialservices.com>, <volvocarfinacial.com>, <volvocarfinacialservice.com>, <volvocarfinamcialservices.com>, <volvocarfinanancialservices.com>, <volvocarfinanccialservices.com>, <volvocarfinanciaalservices.com>, <volvocarfinanciaiservices.com>, <volvocarfinancialaervices.com>, <volvocarfinancialdervices.com>, <volvocarfinancialervices.com>, <volvocarfinancialesrvices.com>, <volvocarfinanciallservices.com>, <volvocarfinancialseervices.com>, <volvocarfinancialseevices.com>, <volvocarfinancialserbices.com>, <volvocarfinancialsercices.com>, <volvocarfinancialserivices.com>, <volvocarfinancialserrvices.com>, <volvocarfinancialservicces.com>, <volvocarfinancialservicea.com>, <volvocarfinancialservicees.com>, <volvocarfinancialservicess.com>, <volvocarfinancialservicies.com>, <volvocarfinancialservicse.com>, <volvocarfinancialservicws.com>, <volvocarfinancialserviecs.com>, <volvocarfinancialserviices.com>, <volvocarfinancialservises.com>, <volvocarfinancialservixes.com>, <volvocarfinancialservlces.com>, <volvocarfinancialservoces.com>, <volvocarfinancialservuces.com>, <volvocarfinancialservvices.com>, <volvocarfinancialsetvices.com>, <volvocarfinancialsevrices.com>, <volvocarfinancialsrevices.com>, <volvocarfinancialsrrvices.com>, <volvocarfinancialsrvices.com>, <volvocarfinancialsservice.com>, <volvocarfinancialswrvices.com>, <volvocarfinanciaslervices.com>, <volvocarfinanciialservices.com>, <volvocarfinancilaservices.com>, <volvocarfinancislservices.com>, <volvocarfinanclalservices.com>, <volvocarfinancoalservices.com>, <volvocarfinancualservices.com>, <volvocarfinanncialservices.com>, <volvocarfinanvialservices.com>, <volvocarfinanxialservices.com>, <volvocarfinnacialservices.com>, <volvocarfinnancialservices.com>, <volvocarfinncialservices.com>, <volvocarfinsncialservices.com>, <volvocarflnancialservices.com>, <volvocarfnancialservices.com>, <volvocarfniancialservices.com>, <volvocarfonancialservices.com>, <volvocarfunancialservices.com>, <volvocarginancialservices.com>, <volvocarifnancialservices.com>, <volvocarinancialservices.com>, <volvocatfinancialservices.com>, <volvocrafinancialservices.com>, <volvocsrfinancialservices.com>, <volvofinancialsevices.com>, <volvofinancialsservices.com>, <volvofinanicalservices.com>, <volvoocarfinancialservices.com>, <volvoxarfinancialservices.com> and <vvolvocarfinancialservices.com> are all registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on January 12, 2021.
On January 11, 2021, the Center also transmitted an email in Chinese and English to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on January 12, 2021. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for 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 Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint and the amendment to the Complaint, in English and Chinese, and the proceedings commenced on January 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on March 8, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is co-owned by AB Volvo and Volvo Car Corporation. The Complainant is the proprietor of the VOLVO trademarks and licenses the right to use them to its subsidiaries in connection with their respective businesses. The Complainant holds trademark registrations in multiple jurisdictions, including Chinese trademark registration number 1060406 for VOLVO, registered on July 21, 1997, specifying goods in class 12 including cars; Chinese trademark registration number 19202460 for VOLVO, registered on April 7, 2017, specifying goods and services in classes 7, 12 and 37; and European Union Trade Mark registration number 010728731 for VOLVO CARS, registered on October 12, 2012, specifying goods and services in classes 12, 36 and 37. Those trademark registrations remain current. In 2019, Volvo Car Corporation sold over 160,000 vehicles in China under the VOLVO mark. The Volvo Car Corporation has also registered multiple domain names, including <volvocarfinancialservices.com>, registered on August 20, 2010, which is used in connection with a website for an entity within the Volvo Group named “Volvo Car Financial Services” that provides information about that entity and its services.
The Respondent is an individual resident in China.
The disputed domain names were all registered on September 17, 2020. According to the evidence, 11 of the disputed domain names1 do not resolve to any active website; rather, they are passively held. The evidence shows that the other 74 disputed domain names resolve to parking pages that display pay-per-click (“PPC”) links to websites regarding, among other things, Volvo cars, Volvo parts, Volvo dealerships, used cars, car insurance, business financing and loans.
5. Parties’ Contentions
A. Complainant
The disputed domain names are confusingly similar to the Complainant’s VOLVO and VOLVO CARS trademarks. The VOLVO trademark is included in the disputed domain names. Most of the disputed domain names also contain misspelled versions of the Complainant’s VOLVO CARS trademark. Said trademarks are also combined with the terms “financial services”.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark VOLVO or VOLVO CARS. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The registrant details in the Registrar’s WhoIs database do not correspond to the disputed domain names in any way.
The disputed domain names were registered and are being used in bad faith. It is the fame and value of the VOLVO and VOLVO CARS trademarks that have motivated the Respondent to register the disputed domain names. The disputed domain names are currently connected to parking pages displaying PPC links leading to third party websites, some of which are operated by the Complainant’s competitors.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names resolve to webpages displaying links leading to various other websites that are available in English; the disputed domain names also include English terms; and it would be cumbersome, costly and delay the process if the Complainant were required to translate the Complaint into Chinese.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,
WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The disputed domain names are all composed of English words, most of them containing an obvious misspelling, which suggests that the Respondent is able to communicate in that language. Moreover, despite the Center having sent the Parties emails regarding the language of the proceeding and written notice of the Complaint in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2. Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the VOLVO trademark. Given the findings below, it is unnecessary for the purposes of this Decision to consider the VOLVO CARS trademark further.
All the disputed domain names wholly incorporate the Complainant’s VOLVO trademark as their only distinctive element. All the disputed domain names add two or more of the words “car”, “financial” and “services”, in that order, in most cases with an additional, omitted, transposed or misspelt letter, but in two cases with the additional word “my” or the abbreviation “com” as their initial element. However, as mere dictionary words (albeit misspelt) or an abbreviation of one, none of these additional elements prevents a finding of confusing similarity between the disputed domain names and the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The trademark VOLVO remains clearly recognizable within all the disputed domain names.
The only other element in the disputed domain names is a generic Top-Level Domain (“gTLD”) suffix (in each case “.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances set out above, the disputed domain names are confusingly similar to the Complainant’s VOLVO trademark. The Complainant submits that it has not given any license or authorization of any other kind to the Respondent to use its trademark. 74 disputed domain names (i.e., all those not listed in footnote 1 of this Decision) resolve to parking pages that display PPC links, including links that capitalize on the trademark value of VOLVO or resolve to websites of competitors of the Complainant, or both. These links operate for the Respondent’s own commercial gain, if he is paid to direct traffic to other websites, or for the commercial gain of the operators of those websites, or both. The other 11 disputed domain names (i.e., those listed in footnote 1 of this Decision) are passively held. The Panel does not consider either use of the disputed domain names to be in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. Nor does the Panel consider either use of the disputed domain names to be a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database, as 杨智超 (Zhichao Yang), not the disputed domain names or even “Volvo”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
With respect to registration, all 85 disputed domain names were registered in 2020, long after the Complainant first registered its VOLVO trademark, including in China where the Respondent is resident. The Complainant had already acquired a considerable reputation in its VOLVO trademark by the time that the Respondent registered the disputed domain names, due to the extensive use of that trademark in the automotive sector, among others. All the disputed domain names wholly incorporate the VOLVO trademark, in most cases as their respective initial elements. All the disputed domain names are approximations of the Complainant’s shareholder’s domain name <volvocarfinancialservices.com>, which is used in connection with a website for an entity in the Volvo group, indicating an awareness of the VOLVO mark. The Respondent provides no explanation for his choice of the disputed domain names. These circumstances give the Panel reason to find that the Respondent was aware of the Complainant’s trademark and registered it in all the disputed domain names in bad faith.
With respect to use, the Respondent actively uses 74 disputed domain names (i.e., those not listed in footnote 1 of this Decision) in connection with parking pages that display only PPC links. Each of these disputed domain names approximates the Complainant’s shareholder’s domain name <volvocarfinancialservices.com>, most consisting of an obvious misspelling of that domain name (including three that omit the word “car” and one that omits the word “services”) while two contain the correct spelling of that domain name but with the additional initial element “my” or “com”. They are evidently intended to divert Internet users who mistype the Complainant’s shareholder’s domain name into a browser. Some of the PPC links capitalize on the trademark value of the Complainant’s VOLVO trademark, or resolve to third party websites, including for competitors of the Complainant, or both. This all indicates that these disputed domain names are designed to attract Internet users by creating a likelihood of confusion with the Complainant’s VOLVO mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s webpages. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to other websites, or for the commercial gain of the operators of those websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Therefore, the Panel finds that the Respondent is using these 74 disputed domain names in bad faith.
The Respondent makes only passive use of the other 11 disputed domain names (i.e., those listed in footnote 1 of this Decision) but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. These 11 disputed domain names, like those that the Respondent uses actively, wholly incorporate the VOLVO trademark and each approximates the Complainant’s shareholder’s domain name <volvocarfinancialservices.com>. There appears to be no other purpose for these disputed domain names than to use them eventually to attract Internet users by creating a likelihood of confusion with the Complainant’s VOLVO mark as to the source, sponsorship, affiliation or endorsement of a webpage of the Respondent or a product or service on such a webpage, as the Respondent is already doing with the other 74 disputed domain names. The Respondent provides no explanation of any other potential use of the disputed domain names. In all these circumstances, the Panel finds that the Respondent is using these 11 disputed domain names in bad faith.
Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <comvolvocarfinancialservices.com>, <myvolvocarfinancialservices.com>, <volvoacrfinancialservices.com>, <volvocaarfinancialservices.com>, <volvocaefinancialservices.com>, <volvocafrinancialservices.com>, <volvocardfinancialservices.com>, <volvocarffinancialservices.com>, <volvocarfianncialservices.com>, <volvocarfibancialservices.com>, <volvocarfiinancialservices.com>, <volvocarfimancialservices.com>, <volvocarfinaancialservices.com>, <volvocarfinabcialservices.com>, <volvocarfinacial.com>, <volvocarfinacialservice.com>, <volvocarfinamcialservices.com>, <volvocarfinanancialservices.com>, <volvocarfinanccialservices.com>, <volvocarfinanciaalservices.com>, <volvocarfinanciaiservices.com>, <volvocarfinancialaervices.com>, <volvocarfinancialdervices.com>, <volvocarfinancialervices.com>, <volvocarfinancialesrvices.com>, <volvocarfinanciallservices.com>, <volvocarfinancialseervices.com>, <volvocarfinancialseevices.com>, <volvocarfinancialserbices.com>, <volvocarfinancialsercices.com>, <volvocarfinancialserivices.com>, <volvocarfinancialserrvices.com>, <volvocarfinancialservicces.com>, <volvocarfinancialservicea.com>, <volvocarfinancialservicees.com>, <volvocarfinancialservicess.com>, <volvocarfinancialservicies.com>, <volvocarfinancialservicse.com>, <volvocarfinancialservicws.com>, <volvocarfinancialserviecs.com>, <volvocarfinancialserviices.com>, <volvocarfinancialservises.com>, <volvocarfinancialservixes.com>, <volvocarfinancialservlces.com>, <volvocarfinancialservoces.com>, <volvocarfinancialservuces.com>, <volvocarfinancialservvices.com>, <volvocarfinancialsetvices.com>, <volvocarfinancialsevrices.com>, <volvocarfinancialsrevices.com>, <volvocarfinancialsrrvices.com>, <volvocarfinancialsrvices.com>, <volvocarfinancialsservice.com>, <volvocarfinancialswrvices.com>, <volvocarfinanciaslervices.com>, <volvocarfinanciialservices.com>, <volvocarfinancilaservices.com>, <volvocarfinancislservices.com>, <volvocarfinanclalservices.com>, <volvocarfinancoalservices.com>, <volvocarfinancualservices.com>, <volvocarfinanncialservices.com>, <volvocarfinanvialservices.com>, <volvocarfinanxialservices.com>, <volvocarfinnacialservices.com>, <volvocarfinnancialservices.com>, <volvocarfinncialservices.com>, <volvocarfinsncialservices.com>, <volvocarflnancialservices.com>, <volvocarfnancialservices.com>, <volvocarfniancialservices.com>, <volvocarfonancialservices.com>, <volvocarfunancialservices.com>, <volvocarginancialservices.com>, <volvocarifnancialservices.com>, <volvocarinancialservices.com>, <volvocatfinancialservices.com>, <volvocrafinancialservices.com>, <volvocsrfinancialservices.com>, <volvofinancialsevices.com>, <volvofinancialsservices.com>, <volvofinanicalservices.com>, <volvoocarfinancialservices.com>, <volvoxarfinancialservices.com>, and <vvolvocarfinancialservices.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: March 16, 2021
1 These 11 disputed domain names are <comvolvocarfinancialservices.com>, <myvolvocarfinancialservices.com>, <volvocaarfinancialservices.com>, <volvocardfinancialservices.com>, <volvocarfianncialservices.com>, <volvocarfiinancialservices.com>, <volvocarfimancialservices.com>, <volvocarfinaancialservices.com>, <volvocarfinabcialservices.com>, <volvocarfinacialservice.com> and <volvocarfinamcialservices.com>.
