WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. PrivacyProtect.org / Aditya Roshni, Web Services Pty
Case No. D2014-0058
1. The Parties
The Complainant is Volkswagen AG of Brieffach, Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is PrivacyProtect.org / Aditya Roshni, Web Services Pty of Nobby Beach, Queensland, Australia / Janakpuri, New Delhi, Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <volkswagentransporter.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2014. 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 January 17, 2014, 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 January 23, 2014, 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 amendment to the Complaint on January 27, 2014.
The Center verified that the Complaint together with the amendment 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, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2014.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 26, 2014. 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 is the owner of several German, European and International trademarks for VOLKSWAGEN in many parts of the world.
The Complainant is also the owner of German trademark for TRANSPORTER which is used to identify series of commercial vehicles.
In 2012, the Complainant was listed as number 12 of the world’s largest corporations in the ranking of the Fortune Global 500.
The disputed domain name was created on July 30, 2006.
5. Parties’ Contentions
Complainant states that the disputed domain name is at least confusingly similar to the Complainant’s trademarks VOLKSWAGEN and TRANSPORTER.
The disputed domain name combines three elements: (1) Complainant’s famous word mark VOLKSWAGEN and (2) the Complainant’s trademark and model designation TRANSPORTER and (3) the suffix “.com.”
Respondent does not operate a business or offers any own goods or services on the website under the disputed domain name.
Complainant has not licensed or otherwise permitted Respondent to use the VOLKSWAGEN and TRANSPORTER trademarks.
Respondent just wants to ride on the good reputation of Complainant and registered and has used the disputed domain name only in order to receive a share of advertising revenue derived from advertisements or to sell the disputed domain name to Complainant.
Respondent is not offering bona fide goods or services, but trying to generate as much traffic and therefore money as he can with advertisements through the Google-Ad sense sponsored links.
Respondent is not commonly known and has no rights over the terms “Volkswagen”, “Transporter” or ”Volkswagen Transporter”.
Respondent is tarnishing Complainant’s well-known and famous registered trademark VOLKSWAGEN.
The Respondent's registration and use of the disputed domain name constitutes bad faith.
Respondent did not reply to Complainant’s contentions.
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.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is indeed composed exactly of two entire trademarks that are trademark registrations of Complainant.
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 two of Complainant’s trademarks i.e: VOLKSWAGEN and TRANSPORTER. In the view of the Panel, this is bound to lead to confusion on the part of consumers and Internet users seeking information on Complainant and its products and services marketed under its well-known registered trademark VOLKSWAGEN and the trademark TRANSPORTER.
The mere 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. 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; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of all of the above, the Panel concludes that the disputed domain name is indeed confusingly similar to the Complainant’s well-known and well-established registered trademark VOLKSWAGEN, and the trademark TRANSPORTER in which Complainant has demonstrated that it has rights.
Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed or permitted Respondent to register or use the disputed domain name or to use the trademarks. Complainant has prior rights in the trademarks which precede Respondent's registration of the disputed domain name.
The Panel finds that Respondent has registered the disputed domain name about seven years ago and has not displayed any own content on the website since, but prominently provides advertisements as sponsored links on the website.
The Panel agrees that the combination in the disputed domain name of the trademark VOLKSWAGEN with the model designation and trademark TRANSPORTER and the content of the website indicates that Respondent had full knowledge of the trademarks and that his only intention was and is to gain profit by riding on the good reputation of Complainant.
Complainant has therefore established a prima facie case that Respondent has no rights ord legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to rebut 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).
Respondent is in default and has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Complainant must prove both that the disputed domain name was registered in bad faith and it is being used in bad faith.
The Panel finds that the disputed domain name’s website incorporates a link at the bottom of the website: “volkswagentransporter.com may be for sale” which attests that Respondent is offering the disputed domain name for sale. The links displayed on the website at the disputed domain name also lead to several websites for acquiring automobiles which also offer competitors’ products such as Buick, Mercedes Benz, Ford, BMW, Honda, Nissan, and Chevrolet automobiles.
The Panel also finds that Respondent did not respond to Complainant’s cease and desist letter sent on October 28, 2013.
In accordance with prior decisions, many Panels found that a failure to respond to a cease and desist letter may be further evidence of bad faith (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; RRI Financial, Inc., v. Ray Chen WIPO-Case-No. D2001-1242; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460; Volkswagen AG v.Privacy Protection Services, WIPO Case No. D2012-2066; Volkswagen AG v. Aditya Roshni, c/o Web Services Party, WIPO Case No. D2013-0635) and Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003).
The Panel agrees that the use of the disputed domain name with the intent to attract internet users to the website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks constitutes evidence of registration and use in bad faith (see e.g. Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557).
Complainant or its affiliated companies operate not only the website “www.vw.com” but also the websites “www.volkswagentransporter.de” and “www.volkswagen-transporter.com” which are also confusingly similar to the disputed domain name.
In view of the Panel, it is clear that the registration of the disputed domain name was an intentional effort to gain Internet traffic from the typing errors of users seeking Complainant’s official domain names <volkswagentransporter.de> and <volkswagen-transporter.com> the latter of, which differs only by a hyphen.
The Panel finds that many panels found that registration of a well-known trademark as a domain name suggests (see Veuve Clicquot Ponsardin, Maison Fond ée 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).
The Panel also agrees that although privacy shields might be legitimate in some cases. It is difficult to see why this Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for Complainant to protect its trademarks against cybersquatting.
For all the foregoing circumstances, the Panel finds that the disputed domain name has been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
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 <volkswagentransporter.com> be transferred to Complainant.
Dated: March 12, 2014