Volvo Trademark Holding Aktiebolag v IE SERDYUK. A. K
WIPO Case No. D2025-1487
•28-05-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Volvo Trademark Holding Aktiebolag v. IE SERDYUK. A. K.
Case No. D2025-1487
1. The Parties
The Complainant is Volvo Trademark Holding Aktiebolag, Sweden, represented by SILKA AB, Sweden.
The Respondent is IE SERDYUK. A. K., Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <volvopenta.group> is registered with Registrar of Domain Names REG.RU LLC
(the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2025. On April 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Stepankovo Yacht Club) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 2025, 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 on April 14, 2025.
On April 14, 2025, the Center informed the parties in Russian and English, that the language of the registration agreement for the disputed domain names is Russian. The same day, the Complainant confirmed their request that English be the language of the proceeding. The Respondent did not submit any
comment on the Complainant’s submission.
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 in English and Russian of the Complaint, and the proceedings commenced on April 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2025.
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The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on May 14, 2025. 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 the trademark owning company jointly and equally owned by Volvo AB and Volvo Car
Corporation (the “Volvo Group”). The Complainant holds trademark registrations for both the marks VOLVO
and VOLVO PENTA. The following trademark registrations, amongst many others, are held by the
Complainant: VOLVO PENTA United States of America (“United States”) Reg. No. 2657859, registered on
December 10, 2002 for good in Classes 7 and 9; VOLVO PENTA European Union Trade Mark No.
003486735, registered on February 3, 2005 for goods in Classes 4, 7, 9, 11, 12, 17, 35, 37, 38, and 42; and
VOLVO PENTA International Registration (designating Russian Federation) No. 1645505, registered on
June 16, 2021 for goods in classes 2, 4, 7, 9, 11, 12, 16, 35, 37, 38, 39, 40, and 42.
The Complainant advertises its VOLVO PENTA offerings from the website “ and also owns and operates websites at <volvo.com>, <volvogroup.com>, <volvocars.com> and <volvotrucks.com> among others.
The disputed domain name was registered on November 20, 2023 and resolves to a shadow site that purports to sell VOLVO PENTA parts.
5. Parties’ Contentions
A. Complainant
The Complainant notes that the Volvo Group was founded in 1927 and is a global leader in transport and infrastructure solutions, offering trucks, buses, construction equipment, and marine and industrial engines. The Volvo Group serves customers in about 180 markets, employs over 100,000 people, and had net sales of SEK 527 billion in 2024.
The Complainant says that it sells its goods under numerous brands including VOLVO PENTA, under which it supplies engines and complete power systems for marine and industrial applications. It advertises these goods from its “ website and by other means. The Complainant has an established social media presence, with multiple accounts across a range of platforms, under the VOLVO PENTA name. The Complainant says that it does not maintain any authorized VOLVO PENTA dealers in the Russian Federation.
The Complainant contends that because of its numerous relevant trademark registrations, it satisfies the threshold requirement of trademark rights sufficient to support a UDRP filing. It says that the VOLVO brand has over time become a distinctive identifier of its offerings. The Complainant contends that the disputed domain name comprises the VOLVO PENTA mark in full and is therefore identical/confusingly similar to the Complainant’s mark.
The Complainant further submits that none of the scenarios identified in Para 4(c) of the Policy that confer rights and legitimate interests on Respondents apply in this matter. The Complainant says that to its knowledge the Respondent does not have trademark rights for, nor is it commonly known by, any term corresponding with or similar to “volvopenta.group”. The Respondent is not connected to nor affiliated with the Complainant and has not received any license or consent to use the VOLVO or VOLVO PENTA marks in any way, the Complainant adds. Further, the Complainant submits that the Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services, nor
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| prominently, and in multiple places, reproduces the Complainant’s VOLVO PENTA trademark and logo, | a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a site which directed to contact the site controller via phone, WhatsApp, email, or Telegram, and that while the site identifies an address and contact number(s), it does not anywhere explain its lack of relationship with the Complainant. Thus, the Respondent uses the disputed domain name to impersonate or pass itself off as an authorized VOLVO PENTA dealer, creating the false impression of an official site, something that the Complainant maintains cannot confer the Respondent with rights or legitimate interests. For completeness the Complainant adds that the site to which the disputed domain name resolves does not satisfy the Oki Data test as it fails its second and third limbs, notably (i) that the Respondent must use the site to sell only the trademarked goods or services; and (ii) that the site must accurately and prominently disclose the registrant’s relationship with the trademark holder. Neither of these are the case in the extant matter. The complete similarity of the disputed domain name to the VOLVO PENTA mark creates an obvious risk of confusion, the Complainant adds. |
| Further, the Complainant points to the long history of its business and its relevant trademarks, and says that previous UDRP panels have acknowledged the renown and recognition attached to, and the distinctiveness of, the Complainant’s VOLVO brand. Its VOLVO and VOLVO PENTA marks are readily ascertainable in any trademark database and a simple google search for Volvo and Volvo Penta proffers results that clearly refer to the Complainant’s own offerings under those brands. The simplest degree of due diligence would have | |
| made any prospective registrant of the disputed domain name aware of the Complainant’s rights in the internationally recognizable VOLVO and VOLVO PENTA brands, the Complainant adds. The composition of the disputed domain name further indicates the Respondent’s intention to capitalize on the Complainant’s trademarks in a bad faith manner, as does the selection of “group” as a generic Top-Level Domain (“gTLD”) extension, clearly hinting at the Volvo Group, the Complainant contends. | |
| for commercial gain, Internet users by creating a likelihood of confusion with the VOLVO PENTA mark. The | |
| In terms of bad faith use, the Complainant submits that the Respondent has intentionally attempted to attract, which effectively impersonates or passes off as an official site of the VOLVO PENTA brand, more particularly covering regions of the Russian Federation. The Complainant emphasizes that the Respondent is doing this to advertise VOLVO PENTA-branded parts and solicit the business of users who, believing they are interacting with an authorized site of the Complainant, contact the Respondent with a view to purchasing the advertised goods. The Complainant contends that such conduct clearly reflects the Respondent’s intention to derive commercial gain by capitalizing on confusion with the Complainant. Additional to hiding its lack of connection to the Complainant and adopting the look and feel and branding of the genuine Volvo sites, the Complainant says that the Respondent has done this by incorporating images of VOLVO PENTA-branded goods and claiming its specialists undergo advanced training in Sweden (where the Complainant is based). This reinforces, according to the Complainant, the false impression that these individuals have been trained by the Complainant or followed some form of Complainant-authorized training. The Complainant concludes by pointing out that Panels have consistently held these kinds of actions to amount to bad faith use. | |
| B. Respondent | |
| The Respondent did not reply to the Complainant’s contentions. | |
| 6. Discussion and Findings | |
| Language of the Proceeding | |
| The language of the Registration Agreement for the disputed domain name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise |
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in the registration agreement, the language of the administrative proceeding shall be the language of the
registration agreement.
The Complaint was filed in English. The Complainant requested that the language of the proceeding be rather than Cyrillic script, the gTLD is an English word, the disputed domain name website uses the Complainant’s trademark, the Complainant and its representatives cannot communicate in Russian, and translation would result in consider expense and undue delay.
The Respondent did not make any specific submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
A. Identical or Confusingly Similar
The disputed domain name <volvopenta.group> is identical to the registered trademark VOLVO PENTA which the Complainant owns.
Therefore, the Panel holds that the first element of the Policy has been established.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant or any of its contentions. The only evidence of use by the Respondent of the disputed domain name, is by way of establishing a shadow website that pretends to be affiliated with and authorized by the Complainant. It does this by adopting the latter’s branding elements,
Oki Data requirements are not met as the site to which the disputed domain name resolves does not display information about its true relationship with the Complainant, and because it offers for sale goods other than the trademarked goods of the Complainant. What the Respondent has done by virtue of the website to which the disputed domain name resolves is intended to mislead Internet users and therefore not apt to result in the recognition of legitimate interests or rights in the Respondent.
the look and feel of its official websites, and by falsely representing that it has employees trained by the deception of any Internet user that visits it. The
Therefore, the Panel holds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The VOLVO PENTA registered trademark of the Complainant has long been in commercial use and attracts considerable goodwill around the globe. It is distinctive, and its use in relation to the “.group” gTLD further suggest that the Respondent was fully aware of the Complainant, the Volvo Group’s rights at the time the disputed domain name was registered. In any case a simple trademark or Internet engine search would have immediately revealed this fact and it behooved the Respondent to undertake such a search before registering the disputed domain name. The subsequent use of the disputed domain name to establish a shadow site, where the Respondent further abuses the Complainant’s trademark rights by replicating its brands in the site without authorization to do so, further reinforces the inference that the disputed domain name was registered in bad faith. Clearly, establishing a deceptive shadow site, that also does not comply with the Oki Data requirements, amounts to use in bad faith of the disputed domain name. The site is
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intended to mislead Internet users into thinking they are dealing with a genuine or authorized VOLVO demonstrate.
Therefore, the Panel holds that the third element of the Policy has been established.
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 name <volvopenta.group> be transferred to the Complainant.
/WiIliam A. Van Caenegem/
WiIliam A. Van Caenegem
Sole Panelist
Date: May 28, 2025
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