WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Ag v Common Sense Enterprises Inc.
Case No. DBIZ2002-00278
This is a decision arising from a Complaint submitted for decision in accordance with the Start-Up Trade Mark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, the rules for Start-Up Trade Mark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules") and the WIPO Supplemental Rules for Start-Up Trade Mark Opposition Policy for .BIZ (WIPO "Supplemental STOP Rules").
2. The Parties
The Complainant is Volkswagen AG a corporation incorporated in Wolfsburg, Germany. The address of the Complainant is Volkswagen AG, Postfach 1884/6, K-DR-E, D-38436 Wolfsburg, Germany. The Complainant is represented by Mr. Philip Koch of HK2 Rechtsanwälte of Karlplatz 7, 10117 Berlin, Germany.
The Respondent according to the WHOIS database of NeuLevel, Inc. is Common Sense Enterprises Inc. a US corporation of 40729 Village Drive, Big Bear Lake, CA 92315, United States of America.
3. The Domain Name and Registrar
The domain name in dispute is <golf.biz>. The registrar with whom the domain name is registered is PSI-Japan, Inc. of Asahi Sanban-cho, Plaza #206, 7-1, Sanban-cho, Chiyoda-ku, Tokyo 102-0075, Japan.
4. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by electronic copy on July 1, 2002, and acknowledgement of receipt of the Complaint given on July 3, 2002. A hard copy of the Complaint was received on July 9, 2002.
Notification of the Complaint and commencement of the administrative proceedings was given to the Respondent by courier, fax and email on July 10, 2002. No response having been received from the Respondent the notification of the Respondentís default was also given by post, fax and email on August 1, 2002. The Panel understands that on August 2, 2002, the Center received an email from the Complainant's representative apparently enclosing a supplemental filing. On August 4, 2002, the Center replied pointing out that no express provision is made for supplemental filing by either party except in response to a deficiency notification or if requested by the Center or the administrative panel unless it is in the sole discretion of the Panel to determine whether to admit and consider the supplemental filing.
On August 20, 2002, an administrative panel was appointed consisting of Mr. Clive Duncan Thorne who has filed the necessary Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understands that the appropriate fees have been paid by the Complainant. No interim orders have been made by the Panel. The language of the administrative proceeding is English.
The Panel notes that on August 21, 2002, the Complainant's representative wrote to the Center pointing out that as long as the Center does not forward the supplemental filing the Panelist "seems not to be able to take into consideration all determining facts" and requested that the supplemental filing be forwarded to the Panel. In the circumstances and bearing in mind that no Response has been filed by the Respondent the Panel has decided the Complaint on the basis of the original Complaint alone.
5. Factual Background
The Complainant is one of the world's leading car manufacturers. Cars manufactured by the Complainant are sold worldwide. The Complainant uses its trade mark "GOLF" to mark one of its car types. The Volkswagen Golf is one of the most frequently sold cars in the world. According to an article in the online issue of a leading German magazine which is exhibited at Annex 8 to the Complaint more Volkswagen Golfs are sold than even the world famous Volkswagen "Beetle". More than 21.5 million Volkswagen Golfs have been manufactured since 1974. The turnover of the Complainant worldwide as set out in its annual report for 2001, (exhibited as Annex 9) exceeded EUR 88,000,000,000.00. The turnover of the Complainant itself was EUR 47,197,000,000.00 for the same period. The Complainant's market share in Germany is approximately 21%. The Complaint's group employs approximately 320,000 employees. The Complainant sold 739,000 vehicles in North America in 2001.
At Annex 3 to the Complaint is set out a list of the trade marks "GOLF" held by the Complainant. The trade mark "GOLF" was, inter alia, registered at the Germany Patent and Trade Mark office on July 6, 1973, with a priority date as May 29, 1973, with Registration Number 907094. The mark is registered in Class 12 for motor vehicles and parts thereof. A copy of the registration certificate is set out at Annex 4 to the Complaint.
The Complainant's trade mark "GOLF" was registered in the United States on September 24, 1985, in Class 12 for automobiles and structural parts with registration number 1361724. A copy of the certificate of registration in the United States is exhibited at Annex 6 to the Complaint. At Annex 7 to the Complaint a European Community trade mark registration for GOLF dated April 14, 1999, registration number 000751909 is also exhibited. The Complainant submits that its trade mark GOLF is famous all over the world.
Taking into account that there is no evidence to the contrary filed by the Respondent the Panel having considered the above evidence finds that the Complainant has significant world wide trade mark rights in the mark "GOLF". Moreover as a result of its world wide trading activity in respect of cars marked "GOLF" it finds that the Complainant has significant trading goodwill and reputation worldwide.
The only evidence filed by the Complainant relating to the current dispute is that set out at Annex 10 to the Complaint which is an email from John Kirkland of Greenberg Traurig LLP an American law firm which was presumably written in response to an approach by the Complainant. The email states inter alia:-
"The golf.biz domain name was registered on behalf of our clients for their own business purposes. The golf.biz domain is intended for the sale of products and services related to the game of golf. Our clients have a legitimate interest in the domain name for such use. As the term "golf" is being used in its generic sense, to refer to the game of golf, not to the "Golf" automobile sold by your client, it is not a trademark infringement. We can assure you that our client is not in the business of selling automobiles, and has no intention of using the domain name to sell any competing products, or in any manner that would infringe upon your client's mark."
The email goes on to refer to the fact that the Respondent has obtained new Counsel to represent them in this matter.
6. Discussion and findings
In accordance with Paragraph 4(a) of the STOP Rules the Complainant is required to prove each of three elements:-
(i) The Respondent's domain name is identical to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The Respondent's domain name has been registered or is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant submits that with the exception of the generic top level domain "BIZ" the domain name <golf.biz> is identical to the trade mark "GOLF" in which the Complainant has rights. Moreover it submits that the existence of the .BIZ generic top level domain in the disputed name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
The Panel accepts this argument and accordingly finds for the Complainant in respect of this element.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant submits:-
(a) There is no relationship between the Complainant and the Respondent and the Respondent is not a licensee of the Complainant and no otherwise permission or consent has been granted to the Respondent to use the mark "GOLF" or to apply for any domain name incorporating this mark.
(b) The Respondent is not commonly known by the domain name <golf.biz> especially as its company name does not include the name Golf.
(c) The Respondent does not hold an international trade mark "GOLF".
(d) The Respondent was put on constructive notice of intellectual property rights by the notice of a .BIZ intellectual property claim for at least four IP owners.
(e) No information is available to show the Respondent's statement that the domain name "GOLF" was registered for the purpose of selling golf sport articles. In addition the Complainant submits that the Respondent falls outside the elements contained in Paragraph 4 (c) of the STOP which provides that any of the following circumstances, in particular but without limitation if found by the Panel to be proved based upon its evaluation of all evidence presented shall demonstrate the Respondent's rights or legitimate interest in the domain name. These are:-
(i) You are the owner or beneficiary of a trade or service mark which is identical to the domain name; or
(ii) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) You (as an individual business or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights.
Looking at the matter overall, and in particular taking into account that no response has been filed by the Respondent. The Panel considers that the Respondent has not demonstrated that it has rights to and a legitimate interest in the domain name. The only evidence in its favour is that statement contained in the email from Mr. Kirkland of Greenberg Traurig. The Panel therefore finds that the Complainant has shown that the Respondent's have no rights or legitimate interest in respect of the domain name.
(iii) The Respondent's domain name has been registered or is being used in bad faith.
The Complainant submits that the domain name should be considered as having been registered in bad faith because:-
(a) The domain name indicates no reference to the Respondent.
(b) The Respondent was put on constructive notice of the Complainant's rights and such constructive knowledge of an intellectual property claim constitutes bad faith registration.
(c) The Complainant's trade mark "GOLF" is being highly promoted worldwide and therefore well known to the public and the Respondent had knowledge of the trade name of the Complainant both in fact and as a matter of law.
(d) The domain name registration, despite the knowledge of pending IP claims and the famous trade mark of the Complainant, indicate that the Respondent primarily registered the domain for the purposes of selling, renting or otherwise transferring the name registration to the Complainant or a competitor of his.
(e) Since the trade mark "GOLF" is world famous and commonly known for the product of the Complainant, consumers and business partners of the Complainant are expecting to find information of the Complainant under domain names consisting of the trade mark of the Complainant.
In addition the Complainant submits that the .BIZ domains shall be used for commercial purposes. The ability to file IP claims and use the STOP procedure have been introduced to enable trade mark owners to register the domains reflecting their trade marks. It further submits that all the details must be seen together that the Respondent has registered a domain name despite having knowledge that at least four IP-claims were filed for the domain name. He would have known of the Complainant's trade mark because the trade mark is famous and a well known trade mark. The Respondent is taking advantage of the coincidence that the Complainant's trade mark is identical to a sports name and maintains to plan a business related to this sport although no information can be obtained to confirm this allegation.
The Complainant surmises that the Respondent's strategy is "obvious" that the Respondent will try to sell or lease the domain name for a considerable price as soon as he is legally and technically enabled to do so.
In the Panel's view the trade mark "GOLF" is well known for the products of the Complainant and arguably as submitted by the Complainant is also "famous". As referred to above the Complainant's trade mark rights go back as far as 1973, in Germany and in the United States to 1985 which is well before the registration date of the domain name on March 27, 2002, as shown by the .BIZ Registry WHOIS date extract annexed as Annex 1 to the Complaint.
Nevertheless the Panel takes into account that the only use claimed by the Respondent is to use the domain name in respect of the game of golf rather than to the "GOLF" automobile. The Complainant's submissions relating to bad faith are essentially based upon surmise. There is no specific evidence which points to bad faith on the part of the Respondent and such evidence that there is of the Respondent's activities, i.e. the email from Mr. Kirkland points to the contrary. The Panel also takes into account the fact that the burden of proof in showing bad faith is upon the Complainant.
In all the circumstances the Panel finds that the Complainant has failed to prove that the Respondent's domain name has been registered and is being used in bad faith.
The decision of the Panel is that the Complainant has failed in its Complaint and accordingly the Panel is not prepared to order that the domain name <golf.biz> be transferred from the Respondent to the Complainant.
In accordance with the Paragraph 4(I) ii, 3, the Panel permits subsequent challenges against the domain name <golf.biz>.
Clive Duncan Thorne
Dated: September 3, 2002