Nominet UK Dispute Resolution Service

DRS 03700

VOLVO TRADEMARK HOLDING AKTIEBOLAG v.
KWAN JIN

Decision of Independent Expert

1.	Parties: 

Complainant:		Volvo Trademark Holding Aktiebolag
Country:		SE

Respondent:		Kwan Jin
Address:	[Respondent has opted to have his address omitted from the WHOIS record]
			
Postcode:		
Country:		

2.	Domain Name:

vovlo.co.uk (“the Domain Name”)

3.	Procedural Background:

The complaint was received by Nominet in full on 23 May, 2006.  Nominet validated the complaint and informed the Respondent, via his listed Registrant ISP (Domain Administration Limited in New Zealand) and via the listed Administrative and Billing Contacts (variously listed as in Melbourne, Australia and Glasgow, Scotland) on 24 May, 2006, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 16 June, 2006) to submit a Response.  Subsequently, the listed Billing Contact replied to Nominet claiming that he was no longer responsible for the Domain Name. No substantive Response or other reply of any sort was received. Nominet informed the Complainant accordingly on 19 June, 2006, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid on 22 June, 2006.

Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert on 29 June, 2006.

4.	Outstanding Formal/Procedural Issues (if any):

None.

5.	The Facts:

The Complainant, Volvo Trademark Holding AB, holds the trademarks for the famous Volvo vehicle businesses, which started in Sweden in 1927 and now operate worldwide.  The Complainant owns many trademark registrations for the VOLVO mark, including Community Registration 2361087 for numerous goods and services, dating from 2001, and many others enforceable in the UK, including UK747362 dating from 1955.

From the WHOIS records and the evidence provided with the Complaint, the Domain Name vovlo.co.uk was actually first registered to one Dominic Vincent Lynch on 16 May, 2004 and was subsequently transferred to the Respondent, Kwan Jin, on or about 16 October, 2004.  At the time of the Complaint, the Nominet Register still showed Mr. Lynch as the billing contact, although Mr Lynch subsequently wrote to Nominet stating that he had transferred the Domain Name, but that he would “contact the owner and inform him of this dispute”.  At the time the Complaint was filed, the WHOIS record also showed the “Registrant Type” was supposedly a “UK Individual” and stated that “The registrant is a non-trading individual who has opted to have their address omitted from the WHOIS service.”

The Respondent, Kwan Jin, has been the Respondent in at least three previous DRS Complaints: DRS 02181 thiistravel.co.uk (Complaint upheld); DRS 02850 cancerbackup.org.uk (Complaint upheld); and DRS 03305 dorothyperkin.co.uk (Complaint upheld).  The Decision in the earliest of these cases dates from January 2005.  In  all three cases, the Respondent was identified as a Korean resident with an address in Seoul, South Korea

6.	The Parties’ Contentions:

Complainant:

The Complainant has asserted that:

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and 
2.	The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

The Complainant made supporting submissions and attached Annexes as follows:

Annex 1:	WHOIS record for the Domain Name
Annex 2:	Volvo Trade Mark Registration Details
Annex 3:	List of other domains in the name of the Respondent
Annex 4: 	Decision in DRS 02181 thiistravel.co.uk
Annex 5:	Decision in DRS 03305 dorothyperkin.co.uk
Annex 6: 	WHOIS and Website examples from Respondent’s other domains
Annex 7:	Printouts from current website at the Domain Name
Annex 8:	Information from archive.org
Annex 9:	Information from hitfarm.com
Annex 10: 	Links from current website at the Domain Name

The Parties

The Complainant, Volvo Trademark Holding AB, holds trademarks for Volvo Car Corporation and AB Volvo.

The registered proprietor of the Domain Name is Kwan Jin. A WHOIS search, contained in Annex 1, shows that Kwan Jin has opted to have his address omitted from the WHOIS service. 

The Rights 

The Complainant (Volvo Car Corporation and AB Volvo) has a substantial reputation and goodwill in the United Kingdom in the VOLVO brand through sales of VOLVO branded vehicles (including cars, trucks and buses), parts and accessories dating back several decades. An illustrative list of the registered trade marks for the VOLVO brand owned by the Complainant (Volvo Trademark Holding AB) is set out in Annex 2. 

The Domain Name is similar to the registered trade marks owned by the Complainant. Further, the Complainant's use of its respective brands is sufficient to give it rights in passing off in the VOLVO brands. The Complainant has "Rights" as defined in the Nominet DRS Policy. 

The domain name varies from the Complainant's registered rights by virtue of the juxtaposition of the "L" and the second "V". A clear misspelling of VOLVO. Accordingly the domain name is similar to the name in which the Complainant has Rights. 

The Domain Names - a pattern of Abusive Registration 

The Complainant believes that the Respondent is engaged in a pattern of registration where the Respondent is the registrant of domain names which correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern. 

Annex 3 is a list of domain names held by the Respondent. The number is well into the hundreds. Illustrative examples of domain names which incorporate third party registered trade marks in which Kwan Jin has no apparent rights are: niketrainers.co.uk, harveynicols.co.uk and guardiannewspaper.co.uk. WHOIS searches for each of these domain names are contained in Annex 6, together with the relevant trade marks and copies of the websites currently operating under these domain names. 

Contained as Annex 4 is a copy of a previous Nominet decision (DRS 02181 - <thistravel.co.uk>) in which the Respondent was involved. Attention is drawn to the fifth paragraph on page 4 which notes the Domain Name. A further Nominet decision involving the Respondent is contained in Annex 5. In both instances, the domain names were found to be Abusive Registrations in the Respondent's hands. 

Use of the Domain Names 

A copy of the current website under the Domain Name is contained in Annex 7. A history of the use of the Domain Name is provided for completeness at Annex 8. The Domain Name is currently parked with Hitfarm.com, a domain parking service website (previously it was parked with a similar entity, Sedo). Hitfarm provides the owner of "unused" domain names with revenue from click-through commission. Further detail on how the revenue is generated is contained in Annex 9, which is Hitfarm's explanation of its service. 

The current website permits users to click-through to other websites offering competing goods. The Complainant submits that this use of the Domain Name constitutes an Abusive Registration. Paragraph 1 of the Policy defines an Abusive Registration as a Domain Name which either: 
(i)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR 
(ii)	(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. 

The Complainant refers to the decision in <wwwdorothyperkins.co.uk > (DRS 3305, copy contained in Annex 5). The Complainant's Rights are being taken unfair advantage of by the Respondent (in producing this per click income for directing consumers away from the Complainant's websites). The use is equally detrimental to the Complainant's rights for the same reason. 

Summary 

The Complainant has Rights as defined in the Policy. The Domain Name is an Abusive Registration within the meaning of paragraph 3(a)(iii) of the Policy. Further the domain name is an Abusive Registration as it has been used in a manner which took unfair advantage of and was unfairly detrimental to the Complainant's Rights.

Complainant asks that the Domain Name should be transferred to it.

Respondent:

The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

Complainant’s Rights

The Complainant in this case has asserted that it has rights in the name VOLVO and that this name is identical or similar to the Domain Name. 

The Complainant provided ample evidence of trade mark registrations for this name.

It is apparent that such registrations and use of the VOLVO name and mark predates the registration of the Domain Name at issue by the Respondent.

It is also abundantly clear that VOVLO is a closely similar word, which the Respondent has used in vovlo.co.uk precisely because of that similarity, and because it has an obvious typographical transposition which users intending to type volvo.co.uk might mistype by accident.  

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name.

Abusive Registration

The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy.  Potentially applicable in the present case in particular are the examples in Paragraph 3a(ii), (iii) and (iv):

ii	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”

iii	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv	It is independently verified that the Respondent has given false contact details to us; 

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative.  They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The evidence shows that the Domain Name has been used to redirect surfers seeking VOLVO to a website with links, which, if clicked through, would generate income for the Respondent, with no reference to the Complainant.  These pages actually use the correct spelling of VOLVO with links to numerous other webpages not genuinely associated with the Complainant or its businesses.

The inference is incontrovertibly that the Respondent has knowingly taken the Complainant’s name and used it in the Domain Name for the specific purpose of diverting potential customers of the Complainant away from the Complainant and to a website with links which are or purport to be in the same or a similar field to the Respondent’s businesses and which would generate income for the Respondent if visited by the potential customer.  The Respondent has thereby misappropriated the Complainant’s property – their goodwill in the VOLVO name – by use of a simple typographical variation of that name in the Domain Name vovlo.co.uk with the intention of unfairly profiting from that misrepresentation. 

The evidence also demonstrates that the Respondent is apparently doing similar activities on a commercial scale using simple typographical variants of hundreds of other marks.  The Respondent has plainly been engaged in the pattern of (Abusive) registrations envisaged in Paragraph 3 a (iii) of the Policy. 

There have also been three previous DRS cases against the same Respondent in the preceding two years, which have all been decided against the Respondent.  

Consequently, the Expert is in no doubt that the provisions of Paragraph 3c of the Policy should apply in any future case brought against this Respondent within the relevant period.

3 c	There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed.

The evidence would also strongly suggest that the Respondent has given false contact details to Nominet or has been intentionally misleading, in failing to update the various contact details on the Register, and in identifying himself as a “UK Individual” and supposedly as a “non-trading individual” in order to benefit from the provisions of Nominet’s Terms and Conditions allowing a “consumer” as “ …an individual not registering, using or planning to use the domain name as part of a business, trade or profession” to opt-out from having their address shown in the WHOIS.  The evidence shows the commercial scale of the typosquatting variations of domain names registered by the Respondent and demonstrates that these are used for the generation of click-through revenues, which must presumably be at least  sufficient to support such numerous registrations and websites.  In the Expert’s view, that amounts to operating a “business” – registering and using domain names, being typographical variations of well-known marks and names, and establishing associated websites to generate click-through income therefrom.  

In these circumstances, the Expert considers that Nominet should give serious consideration to revoking the Respondent’s opt-out for all his domain names on these grounds and to whether sanctions may be invoked under Paragraph 16 of Nominet’s Terms and Conditions (on the grounds that Respondent has provided “significantly inaccurate, not correct, unreliable or false contact details (including names), failed to keep [his] contact details up to date, or failed to give [Nominet] those details at all”), or under Paragraph 17 on the reasonable belief that the contact details for those names may indeed be “so inaccurate or false” that it is not possible to ensure that the Respondent himself can be notified of changes (witness the fact that the contact details had not been updated in the present case). 

For the reasons above, the Expert concludes that the Domain Name has been used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights and that it is an Abusive Registration for the purposes of the Policy.

8.	Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, vovlo.co.uk, should be transferred to the Complainant.

    July 12, 2006
         Keith Gymer