WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Domain Manager
Case No. D2004-0191
1. The Parties
The Complainant in this administrative proceeding is Volkswagen AG (corporation), of Wolfsburg, Germany, represented by HK2 Rechtsanwälte, of Berlin, Germany.
The Respondent in this administrative proceeding is Domain Manager, with an address at Wylam, Northumberland, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The domain name at issue is <vwpolo.com>, which is registered with Intercosmos Media Group d/b/a directNIC.com, in New Orleans, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 12, 2004. On March 12, 2004, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 12, 2004, Intercosmos Media Group d/b/a directNIC.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 17, 2004. 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"), 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 March 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2004.
The Center appointed Zoltán Takács as the sole panelist in this matter on April 26, 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.
The language of the administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
Activities and trademarks of the Complainant
Complainant is a German company, one of the leading car-manufacturers and car-sellers worldwide. Complainant's name is Volkswagen AG, also commonly known as VW, an abbreviation used from as early as 1958. The company itself sold more than 2 million cars worldwide in 2002. Complainant's Group delivered over 4,9 million cars worldwide in 2002, 332,274 thereof in Great Britain, which was an increase of almost 8% of deliveries to Great Britain. Complainant's Group revenue worldwide was more than 86 billion Euro in 2002, it has approximately 320,000 employees.
Next to the most famous cars produced by the Complainant, the legendary Beetle and the VW Golf is ranked another famous product of the Complainant named VW Polo. In the year 2002 alone, Complainant manufactured over half a million VW Polos, and the product was the third biggest seller of the Complainant in 2002 amounting to 10% of all products sold by the Complainant's Group.
The Complainant owns a number of national and international trademarks containing the characters VW and POLO, such as, inter alia:
- Registration No. 648917, of VW (word/pictorial mark) in Germany, with priority of October 1, 1948, for goods and services of classes 1 to 34, particularly for goods of class 12 for motor vehicles, motorbikes and accessories thereto,
- Registration No. 682214, of VW (combined word and pictorial mark) in Germany, with priority of October 7, 1952, for goods of class 12, vehicles and parts thereof,
- Registration No.776400, of VW word mark in the UK, with priority of April 12, 1958, for goods of class 12,
- Registration No. 1056536, of VW word mark in the UK, with priority of December 17, 1975, for goods of class 16,
- International Trademark Registration No. 564504, of VW (pictorial mark), with priority of June 1, 1990, extended to over 30 jurisdictions, for services of classes 35 to 37, 39 and 41 to 42,
- European Community Trademark Registration No. 000703983, of VW (pictorial mark) with priority of December 12, 1997, covering goods and services through classes 1 to 42,
- Registration No. 908404, of POLO word mark in Germany, with priority of June 23, 1973, for goods of class 12,
- European Community Trademark Registration No. 000751933, of POLO word mark with priority of February 19, 1998, covering goods and services of classes 4, 7, 12, 27, 28 and 37,
- International Trademark Registration No. 409783, of POLO word mark, with priority of June 23, 1973, extended to over 30 jurisdictions, for motor vehicles and parts thereof in class 12, and last but not least,
- Registration No. 1034033 of POLO word mark in the UK, registered with priority of August 14, 1974 for motorcars and parts and fittings thereof included in class 12.
The Panel notes that priority dates of all the above-identified trademarks significantly predate the registration date of the disputed domain name, which took place on April 9, 2001. In relation to this fact, the Panel considers as established that both the VW and the POLO mark are well reputed trademarks, not only in the home country of Complainant, but internationally as well.
Complainant's Domain Names and Web Sites
The Complainant often and widely uses a combination of its major house trademark VW in combination with the product trademarks - e.g. "Polo". - in order to distinguish its products. For example, Complainant owns and runs, inter alia, the following websites:
- "VW-GOLF.DE" as well as
- "VW-GOLF.COM", the later registered in June 3, 1997.
Respondent's Identity and Activities
The Respondent is the registrant of the domain name <vwpolo.com>, the Registrar of which is Intercosmos Media Group, Inc. d/b/a directnic.com. When Complainant became aware of registration of the disputed domain name, it was pointed to a sub-section of the website under "www.firstsites.com", under which an Internet portal by topics was provided. The domain name <vwpolo.com> resolved to that Internet directory's car section captioned "firstmotors.com", run by FirstSites.com. The Respondent's email address was "email@example.com" , in all probabilities closely linking the Respondent and the entity that run the site to which the <vwpolo.com> domain name was directed.
On May 15, 2003, Complainant sent a cease and desist letter to Respondent, requesting voluntary transfer of the disputed domain name to Complainant.
In its May 17, 2003 dated response, Respondent refused to admit any infringement of Complainants trademarks, and offered to place a disclaimer on the "www.vwpolo.com" website stating that is not connected in any way to Volkswagen AG.
By September of 2003, Respondent had terminated use of the disputed domain name, which no longer resolved to any active website and was redirected to "www.directnic.com" run by the Registrar of the disputed domain name.
5. Parties' Contentions
Complainant alleges that <vwpolo.com> is identical, or at least confusingly similar to its VW and POLO trademarks, citing WIPO Case No. D2001-0148 (AUDI AG v. Hans Wolf - <audi-lamborghini.com>) and WIPO Case No. D2000-1761 (Saab Automobile AB v. Joakim Nordberg - <saabopel.com>) in support of the contention that other panels have found confusing similarity between the domain names and the trademark in cases where trademarks of two different entities of a company group were used as a domain name.
Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, did not ascertain to be either commonly known by the name VW or Polo, and dit not claim having registrations of any similar trademarks.
Complainant identifies Respondent as a "cyber squatter" seeking to ride and benefit from Complainant's widely recognized VW and POLO trademarks, manifested in diverted traffic to the vehicles section of the Internet directory at "www.firstsites.com".
Complainant also alleges that Respondent registered the domain name in bad faith, since it certainly knew of Complainant's trademarks at the time of registering the domain name at stake. Complainant concludes that Respondent's intent was to attract Internet users to the "www.firstsites.com" site by creating confusion with Complainant's trademarks and was leveraging off the fame of the VW and POLO marks for its own benefit.
For all these reasons, Complainant requests that the contested domain name be transferred to Complainant.
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, Complainant must establish in relation to the compliant:
- that the disputed domain name is identical of confusingly similar to the trademark or service mark in which it has rights, and
- that Respondent has no right or legitimate interests in respect of the disputed domain name, and
- that the disputed domain name has been registered and is being used in bad faith.
In order to succeed in an administrative proceeding, Complainant must prove each of these three elements.
A. Identical or Confusingly Similar to Trademark(s)
Complainant has established its trademark rights arising from a large number of registrations for the words that comprise the domain name, notably the word marks and various design combining VW and POLO marks. The domain name clearly incorporates both trademarks, and although Complainant does not own a registration of such combination of words, it often uses such combination of words both on and off line. Combining two reputed trademarks does not alter the perception of confusing similarity in any way, and in addition the domain name <vwpolo.com> has no other sensible meaning but for its association with Volkswagen AG and its business. The word element "polo" may be widely used in other contexts, but being used in combination with the well-reputed "vw" term indicates clear intention on the side of the Respondent to try to profit from being associated with Volkswagen and the recognized product line under the reputed trademark POLO. Therefore the Panel finds that the requirement of Paragraph 4(a)(i) is met.
B. Respondent's Rights and Legitimate Interests in the Domain Name
There is no connection whatsoever between Respondent and the disputed domain name, and no connection on part of Respondent that could legitimize any interest in the adopted domain name.
Complainant has not permitted Respondent to use its VW and POLO trademarks or to obtain any domain name incorporating these trademarks. In the view of the Panel, presence or absence of rights or legitimate interest is so closely linked to the bad faith registration and use analysis, that respondents usually defend against allegations of bad faith by proving rights or legitimate interest in the disputed domain name. The fact that Respondent did not present any evidence of rights or legitimate interests toward use of the disputed domain name and that the Respondent never had obvious connection to it satisfies the Panel that element (ii) of the Policy's Paragraph 4(a) is also met.
C. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant prove that the domain name both has been registered and is being used in bad faith. For the purpose of justifying this element, evidence might include, inter alia, proof that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source or affiliation of the website or of a product or service on the website (Policy, Paragraph 4(b)(iv).
It is very unlikely that Respondent did not know of the VW and POLO marks of Complainant when it registered and started using the domain name. In addition, Respondent has not presented any evidence, any reason in relation to its possible rights or legitimate interests in the domain name. Respondent first diverted Internet users to the vehicles section of the Internet directory at "www.firstsites.com" (association with the owner or operator of the site arise from the fact that Respondent listed as email address "firstname.lastname@example.org"), which cannot be considered in any other way than an intention to ride on reputation of the VW and POLO marks of the Complainant in order to generate traffic on the "www.firstsites.com" web site. The fact that users were diverted to a vehicle section of an Internet directory is a convincingly clear indication toward substantiating such a belief, given the enormous recognition of Complainant in the car manufacturing business. After being requested to cease use of the domain name and transfer it to Complainant, Respondent terminated use, and since then the domain name does not resolve to an active website. However, this does not relieve Respondent from falling under suspicion that its conduct amount to blocking Complainant to make use of it's reputed trademarks in a domain name. Many panels have come to conclusion that under certain circumstance non-use and inaction can amount to not only bad faith registration, but bad faith use as well.
In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel came to the conclusion that "the concept of a domain name "being used in bad faith" is not limited to positive action". The Panelist in that case concluded that it is possible - pending circumstances of each particular case - that inactivity of the Respondent amount to the requirement of the domain name being used in bad faith.
The Panel is convinced that the registration was made in bad faith for all the above-mentioned reasons, and the circumstance of terminating use of the domain name as a matter of fact adds nothing to the bona fide on Respondent's part. Furthermore, Respondent has not provided any evidence of any actual good faith use by it of the domain name. In that the Panel's finding is that Respondent has registered and has been using the domain name in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
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 name <vwpolo.com> be transferred to the Complainant.
Dated: May 12, 2004