WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Aditya Roshni, c/o Web Services Party
Case No. D2013-0635
1. The Parties
Complainant is Volkswagen AG of Wolfsburg, Germany.
Respondent is Aditya Roshni, c/o Web Services Party, of Janakpuri, New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <vwr32.com> (the “Disputed Domain Name”) is registered with BigRock Solutions Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2013, the Registrar transmitted by email to the Center its verification response disclosing contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 9, 2013 providing the contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 12. 2013.
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” 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 Respondent of the Complaint, and the proceedings commenced on April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2013.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 30, 2013. 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
Complainant is a German automotive manufacturing company headquartered in Wolfsburg, Germany, which designs, engineers, manufactures and distributes passenger cars, commercial vehicles, engines and turbo machinery, and offers related services, including financing, leasing and fleet management. Complainant has one of the most famous and recognizable brands in the world and has an excellent reputation in Germany and internationally. Complainant sells its vehicles in approximately 53 countries.
Complainant owns the VW trademark in many countries and in the European Union. Complainant's products have been marketed throughout the world under the VW trademarks for at least six decades. In addition, Complainant owns the R32 trademark, which it uses to market and sell its successful sports vehicles in many countries throughout the world.
Complainant or its affiliated companies own the domain names <vw.com>, <vw-r32.com> and <vwr32.de>, among others.
Respondent registered the Disputed Domain Name on November 30, 2006.
Complainant sent Respondent a cease and desist letter regarding the Disputed Domain Name, but received no response.
5. Parties’ Contentions
According to Complainant, the Disputed Domain Name is confusingly similar to both trademarks comprised in it. In addition, Complainant concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as there is no indication of 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. Further, Respondent is not commonly known by “VW” or “R32” and Respondent does not use the Disputed Domain Name for a noncommercial or fair use. Finally, Complainant states that Respondent registered and has used the Disputed Domain Name in bad faith.
Complainant seeks the transfer of the Disputed Domain Name from Respondent to Complainant in accordance with paragraph 4(i) of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Name:
(i) That the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.
These elements are discussed as set forth below
A. Identical or Confusingly Similar
Numerous ICANN 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. 2001- 1010; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.
The Panel finds that the Disputed Domain Name, <vwR32.com>, which incorporates Complainant’s VW and R32 trademarks in their entirety, is confusingly similar to those trademarks. When a domain name contains two registered trademarks, such as here, that domain name is deemed confusingly similar to the trademarks at issue. For example, in Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937, the domain name in that case contained two of Complainant’s trademarks, BMW and X5, BMW being the famous car manufacturer and X5 a model designation of BMW. There the Panel found the domain name to be confusingly similar to the trademarks at issue, stating that “In the present context, this combination of two marks in the same expression should deserve entirely the same type of protection that is envisaged for a single mark.” Therefore, the Disputed Domain Name <vwr32.com> is identical or confusingly similar to Complainant’s trademarks.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by Complainant.
B. Rights or Legitimate Interests
Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.
In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent has any authority, license or permission to use Complainant’s trademark.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademark. The name of 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 Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Respondent uses the website to which the Disputed Domain Name resolves to provide advertisements as sponsored links, which it obtains through the Google “Ad Sense” program. Each time a user of the website clicks on one of the advertisements, Respondent automatically receives fees. Some of the sponsored links lead to several websites of competing car manufacturers. Thus, the Panel finds that Respondent is improperly using the Disputed Domain Name for commercial gain
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by Complainant.
C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product on Respondent’s website or location.
First, a finding of bad faith may be made where Respondent knew or should have known of the registration and use of the trademarks prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365.
Such is the present case with Respondent’s registration of the Disputed Domain Name decades after Complainant began obtaining its trademarks in countries throughout the world.
Second, based on the circumstances here, it seems that Respondent registered the Disputed Domain Name to disrupt Complainant’s business and also attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademarks.
Third, Respondent has a considerable history of registering third-party trademarks as domains to divert Internet traffic to pay-per-click parking websites. Respondent was a respondent in more than a dozen previous UDRP proceedings in which the disputed domain names in those cases were transferred to the respective complainants and was deemed to have used and registered the domain names in bad faith. See, e.g., McAfee, Inc. v. Web Services Pty/Aditya Roshni, NAF Claim No. FA1204001439614; F. Hoffmann-La Roche AG v. Domain Admin/ Aditya Roshni/ Web Services Pty, WIPO Case No. D2007-1595; Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty., WIPO Case No. D2008-1086; Dr. Ing. h.c. F. Porsche AG v. Web Services Pty c/o Aditya Roshni, WIPO Case No. D2008-0620; Allstate Insurance Company v. PrivacyProtect.org / Web Services Pty, Aditya Roshni, WIPO Case No. D2011-0289.
Thus, Respondent has engaged in a pattern of behavior which consists of registering domain names containing well-known trademarks and using them to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. The Panel finds that this is evidence of bad faith. Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Policy, paragraph 4(b)(ii).
Fourth, Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
Finally Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letter sent by Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by Complainant.
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, <vwr32.com>, be transferred to Complainant.
Lynda M. Braun
Date: June 13, 2013