World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Privacy Protection Services

Case No. D2012-2066

1. The Parties

The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.

The Respondent is Privacy Protection Services of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wwwvolkswagen.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2012.

The Center appointed Ian Blackshaw as the sole panelist in this matter on November 28, 2012. 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 automotive manufacturing company headquartered in Wolfsburg, Germany. The Complainant designs, engineers, manufactures and distributes passenger cars, commercial vehicles, motorcycles, engines and turbo machinery, and offers related services including financing, leasing and fleet management.

The Complainant is the owner of several National, European and International trademarks for VOLKSWAGEN in many parts of the world, details and official printouts of which are set out in and annexed to the Complaint filed by the Complainant.

Furthermore, the VOLKSWAGEN trademark is one of the most famous trademarks in the world and has a substantial recognition and reputation internationally. This recognition and reputation is documented by the following facts:

On May 28, 1937, the Gesellschaft zur Vorbereitung des Deutschen Volkswagen mbH (English translation of “Company for the Preparation of the German Volkswagen Ltd.”) was established in Berlin, Germany. The name was changed to Volkswagenwerk GmbH on September 16, 1938 and was entered into the Commercial Register on October 13, 1938 (the “Volkswagen Group”).

Nowadays, the Volkswagen Group with its headquarters in Wolfsburg, Germany, including subsidiaries AUDI, BENTLEY, BUGATTI, LAMBORGHINI, MAN, SCANIA, SEAT and ŠKODA, is one of the world’s leading automobile manufacturers and the largest carmaker in Europe for two decades. Complainant’s products have been marketed throughout the world under the trademark VOLKSWAGEN for at least six decades.

In 2011, the Volkswagen Group increased the number of vehicles delivered to customers to 8.265 million (7.203 million in 2010), corresponding to a 12.3 percent share of the world passenger car market. In Western Europe over one in five new cars (23.0 percent) comes from the Volkswagen Group in Germany the market share of Complainant’s group is about 35.9 %.

With a 13.1 percent increase in deliveries to 5.09 million units, the Volkswagen Passenger Cars brand closed 2011 with a new record. Volkswagen Commercial Vehicles also reported a strong increase of 21.4 percent in 2011, delivering 528,800 units worldwide. Therefore, about 5,618,800 units were sold under the Volkswagen brand.

The Complainant’s Group sales revenue in 2011 totaled EUR 159 billion, which corresponds to an increase of 25.6 % (EUR 126.9 billion in 2010). Profit after tax in the 2011 financial year amounted to EUR 15.8 billion (EUR 7.2 billion in 2010).

The Volkswagen Group operates 99 production plants in 18 European countries and a further nine countries in the Americas, Asia and Africa. Approximately 501,000 employees work worldwide for Volkswagen Group and produce each working day 34,500 vehicles worldwide. The Volkswagen Group sells its vehicles in 153 countries.

Evidence, in the form of extracts of the Complainant’s annual report of the financial year 2011 and printouts of the Complainant’s website asserting these figures, has been provided to the Panel.

Furthermore, the Complainant in 2012 is listed as number 12 of the world’s largest corporations in the ranking of the Fortune Global 500. The Fortune Global 500 is an annual ranking of the top 500 corporations worldwide as measured by revenue. The list is compiled and published annually by Fortune magazine. Again, evidence, in the form of a printout of the Fortune Global 500 ranking, has been provided to the Panel.

Also, the Complainant has been party in several earlier UDRP administrative proceedings. The UDRP panels, deciding such decisions, found that the trademark VOLKSWAGEN of the complainant is world famous. See Volkswagen AG v. Milas Auto, WIPO Case No. DTV2006-0003). In Volkswagen AG v. NovaNIC, WIPO Case No. D2005-0142, the panel found that the complainant has a “famous Volkswagen brand” and in Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952, the panel found that “Volkswagen AG is one of the world’s most famous manufacturers of vehicles popularly known under the trademark Volkswagen and also as VW”. In another case, the Panel assumed an extremely strong reputation for the trademark VOLKSWAGEN. See Volkswagen AG v. Zigoumi Constantine, WIPO Case No. D2008-0755.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

i. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name is at least confusingly similar to the Complainant’s trademark VOLKSWAGEN.

The term of confusing similarity is a low threshold test, the purpose of which is effectively to assess whether a Complainant has sufficient rights so as to give it standing to bring a complaint (see, e.g., Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the trademark relied upon with the domain name in issue (see Guccio Gucci S.p.A. v. Zhiyuan Zou, Zouzhi Zhou , Fujian Anfu, WIPO Case No. D2012-0888).

The disputed domain name combines three elements: (1) the prefix “www” (2) the Complainant’s famous word trademark VOLKSWAGEN and (3) the suffix “.com.”

The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “wwwvolkswagen”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose (see Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim, WIPO Case No. D2011-0344; Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro, WIPO Case No. DTV2008-0001).

Therefore, only the part <wwwvolkswagen> of the disputed domain name has to be considered while evaluating confusing similarity or identity.

The part of the disputed domain name, i.e., "Volkswagen", is identical to the Complainant’s trademark VOLKSWAGEN. The other part of the disputed domain name, "www", is the well-known acronym for "world wide web", and is an extremely common prefix (when succeeded by a period) to the domain name in a URL for a website on the Internet. The letters "www" thus have no distinguishing capacity in the context of domain names disputes (see Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyProtect.org, WIPO Case No. D2010-0951). In fact, in the context of domain names, the letters "www" have the effect of focusing particular attention on the word succeeding them, in this case the word "Volkswagen". This is because a casual reader of the domain name may wrongly think that there is a period between the "www" and the succeeding word, and so wrongly assume that the domain name is in fact comprised only of the succeeding word. In addition, the practical effect of preceding a trademark with the letters "www" in a domain name is so-called "typo-piracy" (see World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 and CSC Holdings, Inc. v. Elbridge Gagne WIPO Case No. D2003-0273) - that is, attracting to a different website the Internet user who mistakenly fails to insert a period after the letters "www" when typing the URL of the intended website. Because of both the visual similarity and the potential for typo-piracy, the disputed domain name is confusingly similar to the Complainant’s trademark VOLKSWAGEN (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; and Deutsche Telekom AG v. Luis Javier Collazos, WIPO Case No. D2003-0371).

Many UDRP panel found that domain names that consist of the prefix "www" affixed to a trademark are substantially similar or identical to the relevant trademark. See Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 (<wwwwired.com> is identical to registered WIRED trademark); Classmates Online, Inc. v. Maxim Snezko a/k/a Steve Cho, WIPO Case No. D2007-0825 (<wwwclassmates.com> is confusingly similar to the registered CLASSMATE trademark); Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585 (<wwwscania.com> is confusingly similar to the registered SCANIA trademark); Trustmark National Bank v. Henry Tsung; WIPO Case No. D2004-0274 (<wwwtrustmark.com> is confusingly similar to the registered Trustmark trademark); Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd. WIPO Case No. D2004-0459 (<wwwsummitracing.com> is confusingly similar to registered SUMMITRACING.COM trademark); Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 (<wwwticketmasters.com> is confusingly similar to registered TICKETMASTER trademark); Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745 (<wwweurobet.com> is confusingly similar to registered EURO BET trademark); CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (<wwwamctv.com> is confusingly similar to registered AMC trademark); CITGO Petroleum Corporation v. Horace A. "Woofer" Smith, WIPO Case No. D2003-0054 (<wwwcitgo.com> is confusingly similar to CITGO trademark); Easy Group IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012 (<wwweasyjet.com> is confusingly similar to United Kingdom trademark EASYJET); Match.com, L.P., v. Kausar, WIPO Case No. D2003-0510 (<wwwmatch.com> is confusingly similar to the registered MATCH.COM trademark); Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567 (<wwwhotmail.com> and <wwwmsnbc.com> is confusingly similar to MICROSOFT trademarks); Youbet.com Inc v. Grand Slam Company, WIPO Case No. D2002-0711 (<wwwyoubet.com> is confusingly similar to REGISTEREDYOUBET.COM trademark); Pfizer, Inc. v. Seocho and Vladimir Snezko; WIPO Case No. D2001-1199 (<wwwpfizer.com> is confusingly similar to registered PFIZER trademark); Pioneer Hi-Bred International, Inc. v. Ingescom and Duran, WIPO Case No. D2001-0202 (<wwwpioneer.com> is confusingly similar to registered PIONEER trademark); General Electric Company v. Fisher Zvieli, WIPO Case No. D2000-0377 (<wwwge.com> is confusingly similar to the trademark GE); Reuters Limited v. Global 2000, Inc., WIPO Case No. D2000-0441 (<wwwreuters.com> is confusingly similar to REUTERS trademark); World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (<wwwwwf.com> and <wwwstonecold.com> are confusingly similar to the respective trademarks); InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (<wwwinfospaces.com> is confusingly similar to registered INFOSPACE trademark);

These findings apply to the present Complaint accordingly.

Furthermore, the disputed domain name fully incorporates the trademark VOLKSWAGEN which is a distinctive and famous trademark.

Numerous previous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No.D2001-1010).

ii. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

ii.a. Burden of proof

It is well established by previous UDRP panel that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions (see 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).

ii.b. No bona fide offering of goods or services

The Respondent does not operate a business or offers any goods or services on the website under the disputed domain name.

The Respondent has registered the disputed domain name 12 years ago and has not displayed any real content on the website since. The disputed domain name resolves to a website that prominently displays the statement "Domain Name for Sale", and the statement: “www.wwwvolkswagen.com is available for lease or sale!” and a contact form to make offers for acquiring the domain name for a minimum amount of USD 1250,00 with the statement "Submit all offers to purchase domain here. Minimum sale price $1250.

Furthermore, the website located at the disputed domain name only contains advertisements as sponsored links provided by the “Adsense” program from Google Inc. and twelve links to automobile and laundry related websites. Printouts of these websites have been provided to the Panel.

The Respondent attempts to misdirect Internet users familiar with the VOLKSWAGEN trademark for commercial gain (“pay-per-click” advertising revenues) and tries to sell the disputed domain name, which cannot be considered as a use in connection with a bona fide offering of goods and services, especially considering the chosen disputed domain name <wwwvolkswagen.com>, which is a common misspelling from the Complainant’s domain name <www.volkswagen.com>. Furthermore, the Respondent is using a privacy protection service provider.

All these circumstances demonstrate that the Respondent is not using the disputed domain name for the bona fide offering of goods or services.

ii.c. "Commonly known by"

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent in this proceeding is Privacy Protection Service. The Respondent is, therefore, not commonly known by the name “Volkswagen”, “wwwvolkswagen” or “wwwvolkswagen.com”.

The Respondent has no own rights in the name VOLKSWAGEN cognizable and in the absence of any license or permission from the Complainant to use its name and trademark VOLKSWAGEN or to apply for or use any domain name incorporating such trademark.

ii.d. A non-commercial or fair use of the Respondent is not cognizable

The Respondent is not actively using the disputed domain name, but offering the disputed domain name for sale and displaying sponsored links on the website liked to the disputed domain name for earning revenues when Internet users click on the sponsored advertising links. This cannot be considered a noncommercial or fair use.

Furthermore, the Complainant’s trademark VOLKSWAGEN has an extremely strong reputation and is widely known, as evidenced by its substantial use throughout the world. The combination in the disputed domain name of the world famous trademark VOLKSWAGEN with the prefix “www” indicates that the Respondent had full knowledge of the trademark and that his only intention is to gain profit by riding on the good reputation of the Complainant. It is difficult to think of a fair use of the disputed domain name, because it is obviously confusing and diverting.

Therefore, there is no noncommercial or fair use of the Respondent cognizable.

iii. The Disputed Domain Name was registered and is being used in bad faith

iii.a. Offer to sell / rent or license

The Respondent registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

The disputed domain name was registered 12 years ago and resolves to a website that prominently displays the statement "Domain Name for Sale", and the statement: “www.wwwvolkswagen.com is available for lease or sale!” and a contact form to make offers for acquiring the disputed domain name for a minimum amount of USD 1,250 with the statement "Submit all offers to purchase domain here. Minimum sale price $1250.

Furthermore, the website of the disputed domain name only contains advertisements as sponsored links provided by the “Ad sense” program from Google Inc. and twelve links to automobile and laundry related websites.

All these circumstances demonstrate that the Respondent intended, from the date of registration, to sell the disputed domain name.

The Respondent’s offer to sell the disputed domain name is made to the public. The Respondent did not offer to sell the disputed domain name specifically to the Complainant or its competitors. Nevertheless, those requisite elements may be inferred from the circumstances, especially including the nature of the disputed domain name (its complete incorporation of the Complainant’s famous and specific trademark WOLKSWAGEN with the prefix “www”).

iii.b. Disrupt competitor

Given the reputation and distinctiveness of the Complainant’s trademark WOLKSWAGEN, it is difficult to interpret the Complainant’s use of the disputed domain name other than as an attempt to profit by the deliberate diversion of Internet users, which want to acquire automobile models of the Complainant and misspell the domain name of the Complainant (see also Volkswagen AG v. Zigoumis, Constantine, WIPO Case No. D2008-0755).

Therefore, the disputed domain name is already enough evidence for seeing paragraph 4(b)(iii) as fulfilled. The Respondent deliberately seeks to disrupt the business of the Complainant by directing consumers seeking the Complainant’s website and products to the Complainant’s competitors’ websites, e.g. “www.carsearch.com”.

The links displayed under the website of the disputed domain name lead to the following websites:

Automotive Domains For Sale “http://carbuying.org/”

bed bug laundry nyc “http://nycbedbuglaundry.com/”

Bed Bug Laundry “http://bedbugcleaners.org/”

want ads - free classifieds “http://wantadsonline.com/”

free classified ads “http://estia.com/”

Cars “http://carsearch.com/”

Auto Insurance “http://autoinsurancegroup.com/”

Used Cars “http://carsearch.com/”

Motorcycles “http://motorcycletrader.com/”

Cars “http://carsearch.com/site_map.html”

Auto Salvage “http://autosalvage.com/”

Cars “http://carsearch.com/search/”

The website “www.carsearch.com” offers competitor’s products, such as used Buick, Mercedes Benz, Ford, Audi, BMW, Honda, Nissan, Porsche and Chevrolet automobiles. Printouts of the websites under “www.carsearch.com” have been provided to the Panel.

Internet users looking for the Complainant’s products following the link might switch to automobiles of a competitor on these websites if they find a good offer.

Thus, the Respondent's registration and use of the disputed domain name constitutes use in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

iii.c. Attract Internet users

In accordance with paragraph 4(b)(iv) of the Policy, the use of the disputed domain name with the intent to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark shall constitute evidence of registration and use in bad faith (see e.g., Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557).

The style of the disputed domain name already should be sufficient evidence of an intention to attract Internet users by confusion with the Complainant’s trademark. The registration of the disputed domain name was an intentional effort to gain Internet traffic from the typing errors of users seeking the Complainant’s website. In the words of the UDRP panel, in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069, “The addition of ‘www’ . . . to Complainant’s mark is best explained as a deliberate attempt to exploit user’s typographical mistakes when seeking Complainant’s website”.

The finding that the disputed domain name is very confusingly similar to the trademark provides the foundation for the inference that the disputed domain name is intentionally confusingly similar to the Complainant’s trademark.

Furthermore, the Respondent could not be ignorant of the existence of the famous trademark VOLKSWAGEN.

The Respondent has, therefore, a clear intention to ride on the reputation of the Complainant in order to generate traffic on the website at the disputed domain name <wwwvolkswagen.com>. Given the reputation and distinctiveness of the Complainant’s trademarks and the style of the disputed domain name, it is difficult to interpret the Respondent’s use of the disputed domain name other than as an attempt to profit by the deliberate diversion of Internet users, who want to acquire automobiles of the Complainant or find information about the Complainant (see Volkswagen AG v. Zigoumis, Constantine, WIPO Case No. D2008-0755).

Finally, the Complainant or its affiliated companies operate websites under domain names comprising the trademark VOLKSWAGEN, e.g., “www.wwwvolkswagen.de”; “www.volkswagen.com”; “www.volkswagen.de”; etc., which are also confusingly similar to the disputed domain name, evidence of which has been provided to the Panel.

The fact that the websites at the disputed domain name include links to websites offering competing products to those of the Complainant aggravates the likelihood of confusion. Advertisements on the disputed websites are e.g. from the Complainant’s competitor Adam Opel AG (Corporation):

“Sonderangebote bei Opel Nur für kurze Zeit: Kaufen Sie viele Modelle günstig wie nie! opel.de/sonderangebote”

Again, supporting evidence has been provided to the Panel.

Furthermore, the website contains the following automobile and laundry related links:

“Automotive Domains For Sale

bed bug laundry nyc

Bed Bug Laundry

want ads - free classifieds

free classified ads

Cars

Auto Insurance

Used Cars

Motorcycles

Cars

Auto Salvage

Cars”

Therefore, the use of the disputed domain name is intended to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.

iii.d. Other indications of bad faith

UDRP panels are not limited to the application of the four circumstances of paragraph 4(b) of the Policy, to determine whether the disputed domain name was registered and used in bad faith. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors.

iii.d.1. Prior knowledge of the famous trademark of the Complainant

The registration of the disputed domain name in bad faith may also be ascertained from the fact that the Respondent could not be ignorant of the existence of the famous Complainant’s trademark VOLKSWAGEN. The links on the websites under the disputed domain name lead to car-related websites, which also clearly indicates that the Respondent was fully aware of the Complainant’s trademark when he registered the disputed domain name. The UDRP panel in Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry -Succession Saint Exupéry - D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, found that:

“Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no apparent legitimate purpose to use the trademark is a strong indication of bad faith.

This finding applies to the present Complaint accordingly.

Furthermore, many UDRP panels found that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435; PepsiCo, Inc. v. PEPSI, SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, WIPO Case No. D2008-1053).

iii.d.2. Privacy Service

The publicly available database WhoIs record for the disputed domain name as at the date of the filing of the Complaint herein recorded Privacy Protection Service as the Registrant of the disputed domain name. Privacy Protection Service appears to be a privacy registration service provider, which offers a privacy service for domain name owners.

A large number of UDRP decisions have addressed the relevance of the use of a privacy service to the question of bad faith. Many UDRP panels have decided that using a privacy service can be seen as an evidence of bad faith (see e.g. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753). Other Panels have found that the use of privacy services per se does not constitute bad faith. See, along these lines, Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domain deals, Domain Administrator, WIPO Case No. D2008-1302:

“while Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases.

Although privacy shields might be legitimate in some cases, such as protecting the identity of a critic against reprisal, it is difficult to see why the Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for the Complainant to protect its trademark against infringement and cybersquatting. Therefore, in this case, it is likely - due to the choice of the disputed domain name and the Respondent’s attempt to sell the disputed domain name - that the Respondent opted for a privacy shield to prevent enforcement of legitimate third-party rights, which has been seen as evidence of bad faith by many UDRP Panels (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542).

iii.d.3. Cease and Desist letter

A cease and desist letter has been sent to the e-mail address of the Respondent on October 5, 2012. The Respondent did not respond to this cease and desist letter.

Again evidence of this communication has been provided to the Panel. In accordance with prior UDRP decisions, many UDRP panels have also found that a failure to respond to a cease and desist letter can be evidence of bad faith (see Spyros MichopoulosS.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003), in which the panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

iii.d.4. “Typosquatting”

By using a misspelling (missing to type a dot) of the disputed domain name, the Respondent seeks to attract Internet users who mistype or misspell the Complainant's domain name when seeking to find the Complainant’s website. Such registration and use of a misspelled domain name constitutes "typosquatting," which "in and of itself constitutes bad faith registration and use" (see Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302). Typo squatting is a solution that domain name registrants - like the Respondent- can employ to attract and misdirect users or visitors to the wrong websites, and ultimately to disrupt the business of a trademark owner.

Following the rationale of the UDRP panels in Pfizer, Inc. v Seocho and Vladimir Snezko, WIPO Case No. D2001-1199; Ticketmaster Corporation v Woofer Smith, WIPO Case No. D2003-0346; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302; Neuberger Berman, Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; FleetBoston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915; Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114, or more specially, First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103, the Respondent has engaged in such a typo squatting activity, and doing so can be viewed as a form of bad faith registration.

iii.d.5. Inactive website/Passive holding

The website under the disputed domain name is not pointed to a website with real content, but is merely passively held since the year 2000. It displays only some links and a contact form to make offers for buying the disputed domain name. UDRP panels have found that, as also established in a number of prior cases, the concept of bad faith use in paragraph 4(b) of the Policy includes not only positive action, but also passive holding. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the Complainant’s well-known and indeed famous registered trademark VOLKSWAGEN. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant and its products and services marketed under its famous registered trademark VOLKSWAGEN.

The Panel agrees with the Complainant’s contentions, for all the reasons and previous UDRP decisions cited by the Complainant, that the addition to the disputed domain name of the letters ‘www’ does not provide any distinguishing feature for trademark purposes. Indeed, the addition of these letters only adds to the confusion, for all the reasons and previous UDRP decisions cited by the Complainant.

Likewise, the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity for trademark purposes. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and well-established registered trademark VOLKSWAGEN, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior and lengthy commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known, well-registered and indeed famous registered trademark VOLKSWAGEN. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and indeed famous registered trademark VOLKSWAGEN, which the Panel considers, agreeing with the assertions of the Complainant, was probably not by chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known - indeed, famous - and, therefore, valuable registered trademark VOLKSWAGEN and also the valuable goodwill that the Complainant has established in this trademark through prior lengthy commercial use and promotion of the same, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name, is trading unfairly on the Complainant’s valuable goodwill established in its well-known and indeed famous registered trademark VOLKSWAGEN.

By registering and using the disputed domain name incorporating the well-known and indeed famous registered trademark VOLKSWAGEN, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known and indeed famous registered trademark VOLKSWAGEN, by chance, but, as noted above, on the basis of being aware of the notoriety of the Complainant‘s trademark and its business activities in the automotive industry over a long period of time.

Also, the Panel agrees with the Complainant’s contentions that the Respondent’s use of the disputed domain name by redirecting Internet users interested in the Complainant’s goods and services to its own website for presumed commercial gain (so-called “click-through” advertising revenues), not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267. Furthermore, there are several other indications of bad faith on the part of the Respondent as asserted and evidenced above, with supporting authorities, by the Complainant, including registering the disputed domain name for the purposes of selling the same contrary to the provisions of para. 4(b)(i) of the Policy and also disrupting the business of a competitor contrary to the provisions of para. 4(b)(iii) of the Policy.

Again, the failure by the Respondent to answer the Complainant’s cease and desist letter, as mentioned above, is also evidence of the Respondent’s bad faith. See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 and the UDRP cases therein cited. See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as all the other arguments advanced by the Complainant in its contentions, as set out above, and supported by the previous UDRP decisions cited above by the Complainant, with which the Panel agrees, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <wwwvolkswagen.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: December 12, 2012

 

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