2010 WL 1404175
United States District Court in the Eastern District of Virginia
April 1, 2010
Facts: Ken White registered the domain name volvospares.com, the website currently in dispute, on January 13, 1997. The website sells new and used Volvo parts but is not an authorized dealer of such parts. Plaintiffs, Volvo Trademark Holding AB (“Volvoâ€), first registered the VOLVO trademark in 1956 and have obtained numerous other registrations for the mark. Volvo AB filed a Complaint against volvospares.com on November 5, 2009 alleging two violations under the Anti-Cybersquatting Consumer Protection Act. First, Volvo claims the website is being used in bad faith with the intent to profit. Secondly, they argue this is unauthorized use of the registered VOLVO mark and is likely to cause confusion or dilute or tarnish the mark. After receiving notice the domain name was being challenged, White added a disclaimer stating that the site was in no way affiliated with the official Volvo Group.
Procedural History: Volvo initially filed a claim against White and volvospares.com with World Intellectual Property Organization (WIPO) pursuant to the Uniform Dispute Resolution Policy (UDRP). WIPO found in favor of White and the Complaint regarding this action was filed on November 5, 2009. Defendant did not respond to the Complaint in a timely manner but did mail documents to the Court for review on February 12 and 18 of 2010. Volvo filed for summary judgment requesting the domain name volvospares.com be transferred to Volvo.
Rule: To succeed with an Anti-Cybersquatting Consumer Protection Act claim plaintiff must establish the website is 1) created with bad faith intent to profit and 2) likely to cause consumer confusion OR dilute the famous mark.
Issues: 1) Was volvospares.com created with bad faith intent to profit? 2) Is the domain name identical or confusingly similar to or dilutive of the VOLVO mark?
Holding: Summary judgment is granted in favor of Volvo and the domain name volvospares.com is to be transferred to plaintiffs.
Reasoning:
• Bad Faith Intent to Profit: There is no statutory definition for this term so the Court looked 15 USC 1125(d)(1)(B) which lays out some basic factors a court may consider when faced with this issue. In this case the court found four relevant factors and concluded that White intended to divert sales from authorized Volvo dealers, constituting bad faith with the intent to profit. White reasonably should have known that he was infringing because of the distinctiveness of the VOLVO mark.
• Identical or Confusingly Similar: First the court determined that VOLVO was a famous mark under the three part test laid out in 15 USC 1125(c)(2)(A). Volvo has been using the VOLVO mark continuously to promote and advertise since the name was registered in 1956. The Court found volvospares.com to be confusingly similar because VOLVO is the dominant portion of the domain name and could lead consumers to believe this site was affiliated with Volvo . The court found that the addition of a generic term does not distinguish the domain name from the protected mark and this domain name is deceptive because it could be used to lure potential customers onto its own turf. Court cited Green Products Inc. v. Independence Corn.
• Other Issues: The Court additionally addresses the issue of the WIPO decision by stating that UDRP opinion may be considered but does not preclude a suit from being filed in this Court.
United States District Court in the Eastern District of Virginia
April 1, 2010
Facts: Ken White registered the domain name volvospares.com, the website currently in dispute, on January 13, 1997. The website sells new and used Volvo parts but is not an authorized dealer of such parts. Plaintiffs, Volvo Trademark Holding AB (“Volvoâ€), first registered the VOLVO trademark in 1956 and have obtained numerous other registrations for the mark. Volvo AB filed a Complaint against volvospares.com on November 5, 2009 alleging two violations under the Anti-Cybersquatting Consumer Protection Act. First, Volvo claims the website is being used in bad faith with the intent to profit. Secondly, they argue this is unauthorized use of the registered VOLVO mark and is likely to cause confusion or dilute or tarnish the mark. After receiving notice the domain name was being challenged, White added a disclaimer stating that the site was in no way affiliated with the official Volvo Group.
Procedural History: Volvo initially filed a claim against White and volvospares.com with World Intellectual Property Organization (WIPO) pursuant to the Uniform Dispute Resolution Policy (UDRP). WIPO found in favor of White and the Complaint regarding this action was filed on November 5, 2009. Defendant did not respond to the Complaint in a timely manner but did mail documents to the Court for review on February 12 and 18 of 2010. Volvo filed for summary judgment requesting the domain name volvospares.com be transferred to Volvo.
Rule: To succeed with an Anti-Cybersquatting Consumer Protection Act claim plaintiff must establish the website is 1) created with bad faith intent to profit and 2) likely to cause consumer confusion OR dilute the famous mark.
Issues: 1) Was volvospares.com created with bad faith intent to profit? 2) Is the domain name identical or confusingly similar to or dilutive of the VOLVO mark?
Holding: Summary judgment is granted in favor of Volvo and the domain name volvospares.com is to be transferred to plaintiffs.
Reasoning:
• Bad Faith Intent to Profit: There is no statutory definition for this term so the Court looked 15 USC 1125(d)(1)(B) which lays out some basic factors a court may consider when faced with this issue. In this case the court found four relevant factors and concluded that White intended to divert sales from authorized Volvo dealers, constituting bad faith with the intent to profit. White reasonably should have known that he was infringing because of the distinctiveness of the VOLVO mark.
• Identical or Confusingly Similar: First the court determined that VOLVO was a famous mark under the three part test laid out in 15 USC 1125(c)(2)(A). Volvo has been using the VOLVO mark continuously to promote and advertise since the name was registered in 1956. The Court found volvospares.com to be confusingly similar because VOLVO is the dominant portion of the domain name and could lead consumers to believe this site was affiliated with Volvo . The court found that the addition of a generic term does not distinguish the domain name from the protected mark and this domain name is deceptive because it could be used to lure potential customers onto its own turf. Court cited Green Products Inc. v. Independence Corn.
• Other Issues: The Court additionally addresses the issue of the WIPO decision by stating that UDRP opinion may be considered but does not preclude a suit from being filed in this Court.