WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Whois privacy services, provided by DomainProtect LLC / Mikchail Petrov
Case No. D2013-1237
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Whois privacy services, provided by DomainProtect LLC of Saint-Petersburg, Russian Federation / Mikchail Petrov of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <beetlecabrio.com> is registered with Haveaname, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2013. On July 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and 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 the Complainant on July 16, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 18, 2013.
The Center verified that the Complaint together with the amended 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 July 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on August 13, 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
The Complainant is a well-known manufacturer of motor vehicles. It is the legal owner of German trademark registration for BEETLE, no. 395516919 which was registered on January 24, 1996 and a United States of America (US) trademark registration for CABRIO, no. 74312215, registered on January 24, 1995. The Complainant registered the domain name <beetle-cabrio.com> on April 4, 2011. The disputed domain name was registered on April 6, 2011.
5. Parties’ Contentions
This section contains the Complainant’s submissions with which the Panel may or may not agree.
The Complainant has been manufacturing the Beetle Cabriolet car since 1949. The disputed domain name is confusingly similar to the Complainant’s trademarks BEETLE and CABRIO since it comprises these two names and the generic Top-Level Domain (gTLD) suffix “.com”.
The Respondent does not operate a business or offer any goods or services on the website to which the disputed domain name resolves. It has not displayed any of its own content on that website for the two years since the registration of the disputed domain name. The sponsored links on that website lead to the websites of several other car manufacturers.
The Respondent has used the disputed domain name only to receive a share of the advertising revenue derived from the advertisements or to sell the disputed domain name to the Complainant. The website, to which the disputed domain name resolves, states that the Respondent is accepting offers for the domain name. It provides a link to a further web site which provides a contact form through which offers to buy the domain name can be submitted. The Complainant made contact in this way and received a message “Owners will accept $700 US for domain name”. The Respondent has also offered the disputed domain name through <sedo.de> for a minimum price of EUR 600. Both these amounts are well in excess of the Respondent’s out-of-pocket expenses. The Respondent ignored the Complainant’s offer of out-of-pocket expenses and transfer costs contained in a cease and desist letter.
Given the reputation of the Complainant’s trademarks, the Respondent’s use of the disputed domain name must be an attempt to profit by the deliberate diversion of Internet users wishing to acquire the Complainant’s cars. The links displayed on the website to which the disputed domain name resolves lead to websites where visitors can acquire cars provided by the Complainant’s competitors and car parts.
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 which is identical to it except for the addition of a hyphen between the two trademarks of the Complainant involved.
The Respondent’s use of a privacy service is evidence of bad faith. DomainProtect LLC has also been the losing respondent in 15 cases decided by panels under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
A. Identical or Confusingly Similar
The disputed domain name consists of two trademarks of the Complainant and the gTLD suffix “.com”. While “beetle” is a common word, it is strongly associated with the Complainant. In any event, the addition of “cabrio” makes it clear that the disputed domain name does not refer to the insect. The disputed domain name is confusingly similar to both of the Complainant’s trademarks BEETLE and CABRIO.
B. Rights or Legitimate Interests
The Respondent is not called “Beetle”, “Cabrio” or anything similar to these words and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To anyone who is ignorant of Volkswagen cars, the disputed domain name is meaningless. There is no “cabrio” type of the beetle insect. The only reason to register a domain name which combines two words with such totally different ordinary meanings would be to reflect the Complainant’s trademarks and brand of car. From this, it is apparent, at least without an explanation from the Respondent to the contrary, that he knew about the Complainant’s business and the Beetle Cabrio car.
There is uncontroverted evidence that the Respondent has sought to sell the disputed domain at above his out-of-pocket expenses. Paragraph 4(b)(i) of the Policy says:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name…”
The evidence on file suggests that the Respondent registered and has retained the disputed domain name in order to sell it to the Complainant or a third party for more than his out-of-pocket expenses, knowing of the Complainant’s trademark rights. This is sufficient evidence of registration and use in bad faith.
In view of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <beetlecabrio.com> be transferred to the Complainant.
Date: August 15, 2013