WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Aktiengesellschaft v. Brocante Almere, M Pippolo
Case No. D2011-0845
1. The Parties
The Complainant is Volkswagen Aktiengesellschaft of Wolfsburg, Germany represented by HK2 Rechtsanwälte, Germany.
The Respondent is Brocante Almere, M Pippolo of Flevoland, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <vw-up.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2011. On May 16, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On May 16, 2011, eNom 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 May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2011.
The Center appointed Petter Rindforth as the sole panelist in this matter on June 14, 2011. 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 Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is a car manufacturer and the owner of a number of trademark registrations for VOLKSWAGEN, VW and UP, such as:
German National Trademark Registration No 682211 VW
Registered on October 1, 1955
Class: 12
German National Trademark Registration No 39930000 VW
Registered on July 16, 1999
Classes: 7, 12, 16, 28, 35 – 43, 45
CTM No 002700342 VOLKSWAGEN
Registered on August 27, 2003
Classes: 35, 43, 44, 45
CTM No 001354216 VW
Registered on May 31, 2001
Classes: 4, 7, 9, 12, 14, 16, 18, 25, 28, 35 - 42
CTM No 002700623 VW
Registered on August 27, 2003
Classes: 35, 43, 44, 45
CTM No 002699668 VW (fig)
Registered on September 17, 2003
Classes: 35, 43, 44, 45
CTM No 000703983 VW (fig)
Registered on January 28, 1999
Classes: 1 - 42
IR Registration No 197406 VW
Registered on December 22, 1956
Class 12
Designating a number of countries, among them Benelux
IR Registration No 708041 VW (fig)
Registered on July 2, 1998
Classes 1 - 42
Designating a number of countries, among them Benelux
IR No 0954027 (Designating EC) VW Das Auto. (fig)
Registered on January 4, 2008
Classes: 12, 35, 37
IR No 0954026 (Designating EC) VW The Car. (fig)
Registered on January 4, 2008
Classes: 12, 35, 37
CTM No 001355254 VW-ServiceNet
Registered on May 31, 2001
Classes: 4, 12, 16, 35, 36, 37, 39
German National Trademark No 30755081 UP
Application filed on August 22, 2007
Classes: 12, 28, 35, 37
German National Trademark No 30755082 UP!
Application filed on August 22, 2007
Classes: 12, 28, 35, 37
IR No 955050 (Designating EC) UP!
Registered on January 23, 2008
Class: 12
(Annexes 4, 5 and 9 of the Complainant: showing copies of the Certificates of Registration and/or printouts from official Registry data bases).
The disputed domain name <vw-up.com> was registered on May 20, 2009. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant claims to be one of the world’s leading car manufacturers, and informs that cars of the Complainant are sold worldwide. The trademarks VW of the Complainant are of strong reputation - the Complainant here referring to Volkswagen AG v. Domain Manager, WIPO Case No. D2004-0191, and Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780.
The Complainant refers to its company history, such as the Beetle car from 1945, followed by the Golf, Passat and Polo. The 100,000,000th vehicle bearing the VW badge came off the assembly line in Wolfsburg on May 24, 2005. The Complainant builds vehicles all over the world and has sold over 7,000,000 vehicles in 2010, about 2.3 million of these being Volkswagen vehicles. The Complainant’s Group employs approximately 400,000 employees. In fiscal year 2010, the Volkswagen Group generated sales revenue of approximately EUR 126,900 million. Volkswagen Group operating profit amounts to EUR 7.141 million. In Germany the market share of Complainant’s Group is about 35.1 %; in Europe it is 21.0 % (figures relating to the passenger car market). Annex 8 of the Complainant showing extracts of the Complainant’s annual report.
All cars manufactured by the Complainant carry the VW-sign on their front and rear. Due to the number of cars sold by the Complainant and the Complainant’s market share, consumers virtually come across Complainant’s trademark every day.
The Complainant, affiliated companies or licensees operate websites under domain names comprising the trademark VW, e.g., “www.vw.com”, “www.vw.nl”, and “www.vw.net”.
The Complainant uses the trademark UP for its new series of city car concepts, debuted at the 2007 auto-show IAA in Frankfurt.
According to the Complainant, the disputed domain name is confusingly similar to both trademarks comprised in it.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as there is no indication 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. The Complainant’s use of its mark VW predates the registration of the disputed domain name by more than 50 years. Further, the Respondent is not commonly known by VW or UP, and the Respondent does not and has — for a substantial period of time — failed to use <vw-up.com> for a noncommercial or fair use.
The Complainant has sent two warning letters to the postal address provided in the WhoIs database (Annex 12 of the Complaint). Respondent did not reply to these letters, nor did it begin to use the disputed domain name for a legitimate purpose.
Finally, the Complainant states that the Respondent registered and has used the disputed domain name in bad faith. The Respondent has registered <vw-up.com> - a combination of the Complainant’s famous trademark VW with a new product mark UP - after the plans of the Complainant became public. This also indicates the Respondent’s intention to travel on the good will of the trademarks of the Complainant. The Respondent’s awareness of the Complainant’s trademarks can be deduced from the fact that the Respondent chose a combination of the Complainant’s trademarks VW and UP as the disputed domain name.
Bad faith is also indicated by the fact, that the Respondent registered the disputed domain name after the plans of the Complainant to establish a product family called “UP” became public. According to the WhoIs data (Annex 1 of the Complaint) the disputed domain name was registered on May 20, 2009, i.e., after presentation of the “UP” series at the IAA in Frankfurt.
The Complainant notes that the disputed domain name is inactive, as the content is a default webpage automatically generated to point to a misconfiguration. Referring to the fact that the Respondent has — for at least seven months and fully aware of the Complainant’s rights - failed to start using the disputed domain name for a legitimate purpose, the Complainant concludes that even nonuse, as in this case, should be considered as bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark 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 name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the VW and UP trademarks, registered in Germany, internationally and in the European Union (EU).
The relevant part of the disputed domain name is “vw-up”, as it is well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – is irrelevant when establishing whether or not a mark is identical or confusingly similar.
As the disputed domain name consists of the Complainant’s trademarks VW and UP, with a hyphen in between the two trademarks, the Panel finds that <vw-up.com> is at least confusingly similar to the Complainant’s registered trademarks VW and UP.
B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trade marks VW and/or UP.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As the Complainant has described and proven, its trade mark VW is well-known and registered in many countries, among them the Netherlands – home country of the Respondent. The Panel concludes that the fact that the disputed domain name is composed by a clear combination of the VW trademark and the UP trademark – registered and used by the Complainant shortly before the Respondent’s registration of <vw-up.com> – clearly indicates that the Respondent registered the disputed domain name with full knowledge of the Complainant’s prior trademark rights.
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. See 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.
The final question is whether <vw-up.com> can also be considered as “used in bad faith”. The apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. As shown in previous UDRP cases, like Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
In this case, there are a number of circumstances that, all together, brings the Panel to the conclusion that the disputed domain name is to be considered as similar to also being used in bad faith:
- the Complainant’s trademark VW is well-known and well protected, including in the home country of the Respondent;
- the Complainant’s trademark UP is new and well advertised shortly before the registration of the domain name;
- the Respondent registered <vw-up.com> on May 20, 2009, and seems to have done nothing with the website to which the name resolves;
- the Respondent has not replied to the warning letter sent to him by the Complainant;
- the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name; and
- the Respondent did not reply to Complainant’s contentions.
See Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy”).
Given the circumstances of this case, the Panel therefore concludes that the Respondent must have registered, and then (passively) used, the disputed domain name with full knowledge of the Complainant’s use and prior rights.
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 disputed domain name <vw-up.com> be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: June 27, 2011