WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Zigoumis, Constantine
Case No. D2008-0755
1. The Parties
The Complainant is Volkswagen AG, Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Zigoumis, Constantine, Ottawa, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <volkswagen-audi.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 15, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2008.
The Center appointed Michael J. Spence as the sole panelist in this matter on June 27, 2008. 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 one of the world’s leading manufacturers of automobiles, whose products have been marketed throughout the world under the trade mark VOLKSWAGEN for at least six decades. The Complainant is also the 100% owner of the subsidiary Audi AG, Ingolstadt and has multiple registrations for trade marks consisting of, or including, the word “Audi” throughout the world. Both the marks VOLKSWAGEN and AUDI are of extremely strong reputation. The Respondent operates a ‘click-through’ or portal site under the domain name <volkswagen-audi.com>. The Respondent is neither a licensee of the Complainant, nor operating with the Complainant’s consent. The site operating under the disputed site consists of links to other sites, a few selling bona fide Audi products, but most linking to the websites of companies not in any way associated with the Complainant and some in direct competition with the Complainant.
5. Parties’ Contentions
The Complainant contends that the domain name is confusingly similar to its registered marks, relying upon the panel decisions in Société des Products Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 and Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 to establish that “domain names beginning with the trademark of the Complainant followed by a trademark of the subsidiary of the Complainant are confusingly similar to the Complainant’s trademark.” The Complainant contends that the Respondent has no legitimate interests in respect of the domain name because there has been no bona fide offering of goods or services under the domain name; the Respondent is not commonly known by the names comprised in the disputed domain name; and there has been no cognizable non-commercial or fair use. Finally, the Complainant contends that the domain name was registered and is being used in bad faith because the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion; the Respondent must have had prior knowledge of the Complainant’s trade marks; and there is no conceivable legitimate use that the Respondent could make of the Complainant’s trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts the decisions of the panels in Société des Products Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 and Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 that a domain name consisting exclusively of the trade mark of a Complainant and the trade mark of a subsidiary of that Complainant is prima facie identical or confusingly similar.
For this reason the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
However, in this case the only conceivable legitimate interest that the Respondent could have in the use of the domain name would be if it were using the domain name to advertise the availability of bona fide Volkswagen and Audi products sold under the Complainant’s marks. The Complainant concedes that some of the links contained on the Respondent’s websites are to sites selling bona fide Audi products. The conditions upon which use to promote the resale of a Complainant’s products gives rise to a legitimate interest in the domain name have been strictly defined by the panels in decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. Few if any of the conditions described in those decisions have been met by the Respondent in this case. Moreover, those decisions dealt only with the situation in which the use was by the reseller itself and not by a third party operating a ‘click-through’ or portal site.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
The apparent purpose of the Respondent’s use of the disputed name is to divert traffic to its site, and from there to the third party sites to which it is linked. Panel decisions such as L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc., WIPO Case No. D2005-0623 and F. Hoffmann-La Roche v. Register in hostingfreeweb.com, WIPO Case No. D2007-0391, establish that the use of a Complainant’s mark to operate a ‘click-through’ or portal site for profit is a classic example of bad faith. Given the reputation and distinctiveness of the Complainant’s trade mark, and noting also that the Respondent has made no apparent attempt to contact the Complainant or answer the Complaint, it is difficult to interpret the Complainant’s use of the disputed name other than as an attempt to profit by the deliberate diversion of Internet users.
The Panel therefore finds that the Complainant has, on balance, established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.
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, <volkswagen-audi.com> be transferred to the Complainant.
Michael J. Spence
Dated: July 13, 2008