WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack
Case No. D2015-0070
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Nowack Auto und Sport - Oliver Nowack of Kamp Lintfort, Germany.
2. The Domain Name and Registrar
The disputed domain name <volkswagenmotorsport.com> is registered with http.net Internet GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2015, 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 January 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 27, 2015. 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 Complaint has been submitted in English. According to the information provided by the Registrar on January 19, 2015, the language of the Registration Agreement for the disputed domain name is German. In accordance with its current language practice the Center notified both parties (in “dual language”, both in English and in German) of the potential language issue, inviting the Complainant to 1) either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; 2) either translate the complaint in German or 3) submit a supported request for English to be the language of the administrative proceedings (e.g., by reference to prior party communication, parties identity and any other evidence of familiarity with the requested language) and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant.
On January 20, 2015, the Complainant submitted a request that English be the language of the proceedings affirming the following: Respondent runs an online-shop under “www.nowack-motors.de” in both languages, German and English and is therefore familiar with the English language; furthermore, it results from the undisputed evidence filed by the Complainant that it had contacted the Registrar asking for the language of the relevant registration agreement of the disputed domain name and the Registrar replied that “the correspondence language with the concerned Registry for “.com” is English”; based on this information the Complainant therefore assumed that the Registrar meant English to be the language of relevant Registration Agreement.
In the light of the above, the Center provided the Respondent in both English and German with the Notification of Complaint and Commencement of Administrative Proceeding informing the parties that it would: 1) accept the Complaint as filed in English; 2) accept a Response in either English or German; 3) appoint a Panel familiar with both languages, if available.
On March 20, 2015, the Panel issued Administrative Panel Procedural Order I, as the Panel noted that it appeared that the Notification of Complaint and Commencement of Administrative Proceeding was not copied to an email address indicated in the Complaint.
In light of the above, the Center was directed to re-transmit notification of the Complaint to the above mentioned e-mail address, allowing the Respondent a period of five days in which it could indicate whether it wished to submit a response. The Center did not receive any correspondence from the Respondent in regard to the Procedural Order. The Panel continued to render its decision.
4. Factual Background
The Complainant is the registered owner of numerous national, European and international trademark registrations for the term “Volkswagen”, in particular Community trademark number 000703702 (word), registered on May 10, 1999 for goods and services in numerous classes, including goods in class 12 (amongst others “Vehicles; apparatus for locomotion by land”) and in class 7 (amongst others “Motors, including their parts, other than for land vehicles”).
The disputed domain name <volkswagenmotorsport.com> was registered on August 14, 2012. No content is displayed on the website to which the disputed domain name resolves.
5. Parties’ Contentions
It results from the Complainant’s undisputed allegations that the Complainant’s predecessor company was established on May 28, 1937, in Berlin, Germany. The Complainant is today one of the world’s leading automobile manufacturers. The Complainant’s products have been marketed throughout the world under the trademark VOLKSWAGEN and VW for at least 60 years. The Complainant operates 107 production plants in 19 European countries and a further nine countries in the Americas, Asia and Africa. Moreover the Volkswagen Group sells its vehicles in 153 countries.
The Complainant contends that the disputed domain name is confusingly similar to its trademark VOLKSWAGEN since it wholly incorporates the Complainant’s trademark and the addition of the generic words “motorsport” does not serve to distinguish the disputed domain name from the trademark VOLKSWAGEN.
It further results from the Complainant’s contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent has failed to make any active use of the disputed domain name and therefore is not offering bona fide goods or services. Moreover, the name of the Respondent has no apparent connection to the disputed domain name that would suggest that it is related to a trademark or trade name in which the Respondent has rights and the Respondent is not commonly known by the name “Volkswagen”, “Volkswagenmotorsport” or <volkswagenmotorsport.com>. Finally, no noncommercial or fair use of disputed domain name by the Respondent is recognizable. Rather, according to the Complainant, the Respondent’s 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 <volkswagenmotorsport.com>, because it is obviously confusing and diverting.
Finally, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. In particular, it results from the Complainant’s undisputed allegations that the Respondent registered not only the disputed domain name but also more than 60 further domain names composed of famous car manufacturers’ company names or trademarks in combination with descriptive or generic terms related to cars and car tuning (such as <kiamotorsport.net>, <bmwinformation.com>, <astonmartintuning.net>, <bmwracedays.com>, <mini-cooper-world.com>, <hyundai-suv.com>, <ferrarituning.net> etc). These registrations have the only purpose to prevent the Complainant and other trademark owners from reflecting their famous trademarks in corresponding domain names, as they have all not been used for displaying any content for years. The Respondent has therefore engaged in a pattern of such conduct.
The Respondent did neither reply to the Complainant’s contentions nor to the Complainant’s request for English to be the language of the administrative proceedings.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied, examining first of all the preliminary issue of the language of the proceedings.
A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see e.g. General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334). Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (see SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400).
In the case at issue, this Panel considers that conducting the proceedings in English would not be disadvantageous to the Respondent, since it results from the Complainant’s undisputed allegations that the Respondent has demonstrated an ability to understand and communicate with its potential customers in English through its online-shop under “www.nowack-motors.de” containing substantial content also in English language. The Panel also notes that the term “motors” contained in the Respondent’s domain name contains the descriptive English term “motors”. The Panel is therefore prepared to infer that the Respondent is able to understand and communicate in English.
Furthermore, the Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into German. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay.
Finally, the Panel notes that the Respondent did neither object to the Complaint being in English nor to the request made that the proceedings be conducted in English. The Respondent was given a fair opportunity to present its case, to raise objections as to the request for English to be the language of proceedings or to inform the Center on its language preference. It has however chosen not to comment on any of these issues, (cf. Volkswagen AG v. Song Hai Tao, WIPO Case No. D2015-0006)
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion, according to paragraph 11(a) of the Rules and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks for the word “Volkswagen” in particular of Community trademark number 000703702, registered on May 10, 1999. This Community trademark predates the creation date of the disputed domain name.
Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102). This is the case here where the Complainant’s registered trademark VOLKSWAGEN is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant’s registered trademark VOLKSWAGEN as its distinctive element with the term “motorsport”, which is totally applicable as a generic term to the field in which the Complainant plays a prominent role, i.e. the automotive sector. This Panel shares the opinion of the panel in Bentley Motors Limited v. Adeeb Khaleel, WIPO Case No. D2012-2313 (<bentleymotorsport.com> and <bentleymotorsports.com>) that this term is calculated to increase the likelihood of confusion between the trademark and the disputed domain name (cf. Dr. Ing. h.c. F. Porsche AG v. Kudos Trust/Domains by Proxy, Inc. and Standard Tactics LLC, WIPO Case No. D2006-0164).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).
The Complainant has established that its trademarks have existed for a long time and its products have been marketed throughout the world and in particular also in Germany, where the Respondent is apparently resident, under the trade mark VOLKSWAGEN for at least 60 years. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name included the Complainant’s VOLKSWAGEN trademark when it registered the disputed domain name.
It further results from the evidence provided by the Complainant that the Respondent has not only registered the disputed domain name but also more than 60 other domain names following the pattern of combining company names of famous automobile manufacturers with car related generic terms (such as <kiamotorsport.net>, <bmwinformation.com>, <astonmartintuning.net>, <bmwracedays.com>, <mini-cooper-world.com>, <hyundai-suv.com>, <ferrarituning.net>). In Volkswagen AG v. Torbay Camper Conversions Ltd / Roger Pattie, WIPO Case No. D2014-0120 the panel ordered transfer of the domain names to the complainant and held that “the Respondents have registered the disputed domain names in order to prevent the Complainant from using its marks in corresponding domain names, and have further shown that the Respondents have engaged in a pattern of such conduct, by registering domain names incorporating the trademarks and automobile model names of many other automotive manufacturers, thus establishing bad faith registration and use of the disputed domain names under paragraph 4(b)(ii) of the Policy”. This Panel shares the afore mentioned view and finds that the Complainant has shown that the registrations of the disputed domain name and the other multiple domain name registration of famous car manufacturers in combination with descriptive or generic car related terms have the only purpose to prevent the Complainant and other trademark owners from reflecting their famous trademarks in corresponding domain names.
In addition, the Panel notes that the disputed domain name is held passively. Previous UDRP panels have found that such use does not prevent a finding of bad faith (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The Complainant has thus established all three elements necessary under paragraph 4(a) of the Policy in order to obtain an order that the disputed domain name should be transferred.
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 <volkswagenmotorsport.com> be transferred to the Complainant.
Tobias Malte Müller
Date: March 26, 2015