WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Volkswagen Aktiengesellschaft v. SPNC

Case No. D2003-1036

 

1. The Parties

The Complainant is Volkswagen Aktiengesellschaft, of Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Germany.

The Respondent is SPNC, of Warszawa, Poland.

 

2. The Domain Names and Registrar

The disputed domain names <vwbankdirect.com> and <vwbankdirect.net> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 24, 2003. On December 30, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 30, 2003, Go Daddy Software

transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 16, 2004.

The Center appointed Anders Janson as the sole Panelist in this matter on February 24, 2004. 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 a German limited company, in the business of manufacturing cars. The Complainants name is Volkswagen AG, but it is commonly known as VW, an abbreviation used from the start of the Complainantís enterprise. The Company has manufactured more than 21,5 million VW Golfs since 1974, and the Complainants Group sold more than 4,9 million cars worldwide cars in the year 2002. The Complainantís group sales revenue worldwide was more than Ä 86 billion and employs approximately 320.000 employees.

Volkswagen Bank GmbH, commonly known as VW Bank is a wholly-owned subsidiary, which offers banking services, in particularly financing for the Complainantís cars. It is common for car manufacturers to offer banking services either by themselves or by subsidiaries. Such services can be found under <Renault-bank.de>, <chryslerfinancial.com>, <bmwbank.de>, <peugeoutbank.de> and <Toyota-bank.de>. The Complainantís subsidiary offers its services on the Internet under the Ė amongst others - domain names <vw-bankdirect.de>, <vwbankdirect.de>, <vwbank.de>, <vw-bank.de>, <vw-bank.com>, volkswagenbank.de>, and <vw-volkswagenbank.com>. Another subsidiary, Volkswagen Bank Polska S.A. offers banking and financing services under the domain name <vwbankdirect.pl>.

The suffix "direct" in domain names is commonly in use within the sector of financial services, which often stands for the on-line services offered by the company, such as <firstdirect.de>, <entriumdirect.de>, <comdirect.de> and <hvb.de>.

The subsidiary Volkswagen Bank GmbH owns the trademark "VOLKSWAGEN BANK DIRECT", registration No 39721651.3, registered in Germany May 14, 1997.

Further more, the Complainant is in itself the owner of several hundred trademark registrations of the mark "VW", such as, inter alia:

- Registration No 682 214, of VW in Germany, registered October 1, 1952;

- Registration No 653,695 of VW, in the US, registered on October 19, 1957;

- Registration No 1067310 of VW, in Great Britain, registered December 30, 1981;

- Registration No 1166800, of VW, in Germany on June 1, 1990, for inter alia procurement of financial transactions and factoring,

- Registration No 39800184.7, in Germany, on July 1, 1998, for inter alia financial concerns financial transactions, including dealing in credits, banking and leasing.

- Registration No 728196, international trademark under the Madrid Agreement and Protocol thereto, on July 16, 1999.

The Panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of the registrations listed in the Complaint predate the date of registration of the disputed domain name by the Respondent, which was on December 27, 2001.

The Panel finds it established that VW is a well-recognized trademark and that the trademark is both distinctive and famous.

The Respondentís stated name is "SPNC", with the stated administrative contact Slawomir Nowakowski. The Disputed Domain names links to a site provided by the Registrar Go Daddy. The Complainant has asserted, and produced evidence of, that the disputed domain names has been offered for sale on the web-site.

When first aware of the domain name registration of the disputed domain name <vwbankdirect.com>, the Complainant sent a cease and desist letter to the Respondent. In a response signed by a lawyer on behalf of the Respondent, the Respondent offered to sell the domain name in question. No claim was made as to the legitimate interest to the domain name apart from the selling of the domain name.

The Respondent is in default, and accordingly, has not challenged the conclusions of the Complainant.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

- The disputed domain names are identical and confusingly similar to a trademark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain names;

- The domain names have been registered and are being used in bad faith; and

- The domain names <vwbankdirect.com> and <vwbankdirect.net> should be transferred to the Complainant

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The domain names at issue are <vwbancdirect.com> and <vwbankdirect.net>. Complainant is the holder of a large number of registered trademarks of the word and figure mark VW all over the world. The trademark is very well known. The Complainant has also asserted, and produced evidence of, that it is not uncommon for car manufacturers to offer banking services. The Complainants further has provided evidence in support of the dommon use of the suffix "direct" in web-sites within the financial sector.

The Panel finds that the distinguishing part of the domain names, "VW", is in itself a distinguished trademark, as well as the unabbreviated form, "Volkswagen". The Panel further finds it established that the Complainants subsidiary Volkswagen Bank GmbH offers its services under the domain names <vwbankdirect.de> or <vw-bankdirect.de>. and the polish subsidiary Volkswagenbank Polska S.A. offers its services under <vwbankdirect.pl>, which enhances the confusing similarity.

The Panel also finds that the suffix "bank direct" in the domain names is merely descriptive. The incorporation of a famous trademark by adding generic terms does not alter the perception of confusing similarity. The Panels finds that because the Complainantís subsidiaries offer banking services, the disputed domain names are misleading to any potential customer

In conclusion, the Panel finds that the Complainant has provided statements to support the supposition that the disputed domain names and the trademark of the Complainant are confusingly similar.

The Respondent does not contest this supposition.

The domain names must therefore be considered confusingly similar to the trademark VW and/or VOLKSWAGEN. The Panel holds that the Complainant has established element (i) of the Policy Paragraph 4(a).

B. Rights or Legitimate Interests

The Respondent has not filed a Response in accordance with the Rules, Paragraph 5. There is no apparent connection between the Respondent and the disputed domain names, and no obvious legitimate connection between the disputed domain names and the content of the site to which it links. There is no evidence of the Respondent's use of, or demonstrable preparation to use the domain names with a bona fide offering of goods and services. The Respondent has not presented any evidence of rights or legitimate interest in using the disputed domain names.

The Complainant has not licensed or otherwise permitted the Respondent to use the trademark "VW" or to apply for a domain name incorporating this trademark.

Under these circumstances, the mere assertion from the Complainant that the Respondent has no rights or legitimate interests is enough to shift the burden of proof to the Respondent for him to demonstrate such a right or a legitimate interest. The Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain names and has no obvious connection to them. Further more, the Respondent has offered the domain names for sale, and has apart from that not claimed any other legitimate interest to the domain names.

The Panel therefore holds that the Complainant has established element (ii) of the Policyís Paragraph 4(a).

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), evidence of the registration and use of a domain name in bad faith shall include, inter alia, proof that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainantís mark as to the source or affiliation of the website or of a product or service on the website (Policy, Paragraph 4(b)(iv)).

The Panel has already established that the mark "Volkswagen" and its abbreviation "VW" are well known and that the disputed domain names are confusingly similar to the Complainantís famous mark. The trademarks have been registered in many countries for decades. The Complainant is a very well known car-manufacturer, which also, like many of its competitors, offers banking services primarily to finance the purchase of cars.

It is most unlikely that the Respondent registered the disputed domain names not knowing of the Complainantís mark. Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using or registering the

disputed domain names. The Respondent has not, since registering the domain names almost two years ago, set up a web-page indicating any preparations to use the domain names, nor has in any other way seemingly made use of the domain names other than offering to sale the domain names, which in itself cannot demonstrate a legitimate interest or right in, or bona fide use of, the domain names.

Further more, to register a company that incorporates the term "bank" is, as a general principle in most countries as far as the Panel is aware, limited to enterprises that holds certain permissions, and thus are entitled to carry on a banking business.

The fact that the Respondent also has registered the same domain name under two different top level domains suggests that the Respondent is engaged in a pattern of conduct. The Registration further prevents the Complainant from registering the Domain names.

For the abovementioned reasons, the Panel finds that the Respondent has registered the disputed domain names in bad faith. The Panel therefore, concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <vwbankdirect.com> and <vwbankdirect.net> be transferred to the Complainant.

 


 

Anders Janson
Sole Panelist

Date: March 9, 2004