WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Group of America, Inc. v. Kim Hyeonsuk a.k.a. Kim H. Suk, Domain Bar, Young N. and Kang M.N.
Case No. D2014-1596
1. The Parties
The Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America ("US") represented by Phillips, Ryther & Winchester, US.
The Respondents are Kim Hyeonsuk a.k.a. Kim H. Suk of Gyeongju, Republic of Korea, Domain Bar, Young N. of Pohang, Republic of Korea, and Kang M.N of Busan, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <audiplus.com>, <auditex.com>, <ducatisti.com>, <golfiv.com>, <gsgolf.com>, <tsgolf.com>, <vwmania.com> and <vwservice.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2014. On September 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondents as the registrants and providing contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 24, 2014.
The Center verified that 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 proceeding commenced on September 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on October 20, 2014.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on October 23, 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 in this matter is Volkswagen of America, Inc. The Complainant is not the registered owner of the relevant trademarks upon which its case rests; they are registered to the Complainant's affiliates. However, the Complainant asserts that it has been given the specific authority to pursue this matter by the relevant trademark owners and parent companies. The Complainant's assertion does not rest on any evidence of license agreements or ownership provided in the Complaint. Section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, indicates that it is desirable that evidence of relevant license agreements or subsidiary ownership should normally be provided where the complainant is not the registered owner of relevant trademarks. However, in this case the Complainant's assertion as to the grant of its right to file this proceeding by Volkswagen AG and Audi AG must be considered as certified complete and accurate. The Complainant also asserts that it is the exclusive licensed importer into the U.S. of Audi and Volkswagen motorcars, and Ducati products. Further, the Complainant points to previous decisions where Panels have concluded that the Complainant has the right to enforce the trademarks of Audi AG and Volkswagen AG. Ducati S.p.A is also a wholly owned subsidiary of Volkswagen AG. In the circumstances the Panel considers that the Complainant has a sufficient right to bring the present proceedings based on the VOLKSWAGEN, AUDI, and DUCATI trademarks.
The Panel notes however, that although the Complaint is filed in the name of Volkswagen of America, Inc., the Complainant in the body of the Complaint states that the term "Complainant" as used throughout the Complaint is intended to refer to four Complainants, that is Volkswagen Group of America; Volkswagen AG; Audi AG; and Ducati Motor Holdings S.p.A. Given that in fact the Complainant, Volkswagen of America, has been granted the right to bring these proceedings by the latter three parties, it is an unnecessary complication to then also maintain in the body of the Complaint that the proceeding has in fact been filed by all those parties together.
Audi obtained its first U.S. registration for AUDI (Reg. No. 0,708,352) in 1960 and has acquired many additional registrations for AUDI and marks that incorporate AUDI since then. The first U.S. registration for VW (Reg. No. 0,653,695) dates from 1957 and many additional registrations for VW and marks that incorporate VW have followed since that date. The first U.S. registration for GOLF (Reg. No. 1,361,724) was obtained in 1983. The first U.S. registration for the DUCATI trademark (Reg. No. 1,424,581) was obtained in 1987. Complainant has extensive trademark rights in the various marks outside the U.S. as well.
The disputed domain names were registered on various dates:
<audiplus.com> December 25, 2006;
<auditex.com> May 24, 2005;
<ducatisti.cOM> December 23, 2005;
<golfiv.com> December 30, 2003;
<gsgolf.com> September 24, 2004;
<tsgolf.com> November 14, 2004;
<vwmania.com> February 1, 2004; and
<vwservice.com> January 7, 2006.
All were registered with eNom, Inc. The Complainant asserts that all the disputed domain names were updated shortly after the Complainant's initial letter of demand was delivered to the Respondent on May 13, 2014.
5. Parties' Contentions
The Complainant submits that although they have superficially different names, the named registrants for each of the disputed domain names are in fact one and the same. The mere fact that the names are different should not, according to the Complainant and upon the authority of previous UDRP decisions, prevent a finding that there is a single entity who is the proper Respondent. The Complainant submits that a number of factors indicate that there is a single underlying Respondent.
All the named registrants are linked to the same domain name reseller, DomainBar, operating at "www.domainbar.com" as a reseller of "premium domain names". When the Complainant's representative communicated by email with Kim Hyeonsuk in relation to <vwservice.com> he received a reply from "Young" at DomainBar. This correspondent alleged that "vwservice" stands for "very worshipful service", but also indicating the domain name had been obtained at a high cost, seeking compensation for a transfer etc.
Further, according to the Complainant, the named registrants have registered many domain names incorporating famous household brands, not only those of the Complainant. The various registrants are also said to use very similar contact information, in particular Kim Hyeonsuk and Kim H. Suk. Young N. and Kim H. Suk (a.k.a Kim Hyeonsuk) are both listed in the WhoIs records for six of the disputed domain names, in separate capacities, according to the Complainant. Further, registrants Kim Hyeonsuk, Kim H. Suk, and Young N. have used the same phone number and email address as contact information, as revealed by the WhoIs records. Furthermore, according to the Complainant, historical WhoIs data reveals that Kim Hyeonsuk was the registrant of <vwmania.com> before Kang M.N, and that the mailing address in the WhoIs record for <vwmania.com> was changed on May 13, 2014. This is the same day that the Complainant delivered a letter of demand to Kim Hyeonsuk regarding <vwservice.com>. Historical WhoIs data also indicates, according to the Complainant, that Young N. formerly used a mailing address that was nearly identical to the address of Kang M.N. The Complainant also asserts that a prior Panel has found that Kang M. Nam and "Domain Bar Young N," "are one in the same person" (referring to BASF SE v. Kang M. Nam and Domain Bar Young N, WIPO Case No. D2010-0900).
In conclusion on this point, the Complainant asserts that the evidence in the present matter, combined with the findings of the BASF panel as cited above, demonstrate that the named registrants are acting in concert and engaged in the resale of "premium domain names," whether together using the trade name "DomainBar," or as one person using various aliases. Accordingly, the Complainant contends that the named registrants should be treated as a single Respondent in this matter.
The Complainant points out that each of the disputed domain names consists of one of the Complainant's trademarks paired with a generic term or string of letters, and that they were registered long after the Complainant's marks had become famous worldwide. Further, the Complainant asserts that as far as it can make out, the only use the Respondent has made of the disputed domain names is to direct Internet traffic to the Respondent's own website, where the Respondent advertises its service of selling premium domain names, or to a parking websites displaying click-through advertising links that are targeted in accordance with the trademark meaning of the domain names.
According to the Complainant each of the disputed domain names incorporates a distinctive trademark of the Complainant with the addition of some generic terms or strings of letters. The additions do nothing to dispel the confusing similarity of the disputed domain names to the Complainant's trademarks.
Further, the Respondent has no legitimate trademark rights in the disputed domain names, has never made a bona fide use of the disputed domain names, was never authorized to incorporate the Complainant's trademarks in the disputed domain names, and has no connection or affiliation with the Complainant. Also according to the Complainant, the infringing use of the disputed domain names that the Respondent has engaged in is not of a kind that gives rise to a right or legitimate interest. According to the Complainant, the Respondent's contention that "vwservice" stands for "very worshipful service" is also an obvious pretext, the only use ever having been made of this disputed domain name being to generate click-through revenues by reference to the trademark meaning of VW.
Further, according to the Complainant its relevant trademarks are famous marks whose unauthorized incorporation in a domain name ipso facto amounts to registration in bad faith. It is impossible for the Respondent to claim ignorance of the marks, or some legitimate interest in domain names incorporating the marks. The fact that the Complainant's relevant marks are registered in numerous jurisdictions also confers constructive knowledge of those marks upon the Respondent. Further, the fact that Internet users are redirected to "www.domainbar.com" where premium domain names are said to be for sale, and that some of the disputed domain names provide links to competing products, indicates knowledge of the Complainant's trademark reputation. In any case, in relation to <vwservice.com>, the Respondent indicated it had been acquired at a high price, demonstrating his knowledge of the status and value of the incorporated trademark.
Finally, according to the Complainant the Respondent has a history of cybersquatting. The Respondent has been the losing party in a number of prior domain name disputes, and the Respondent exemplifies a "habitual cybersquatter engaged in a pattern and practice of registering and using in bad faith domain names corresponding to the well-known trade names and/or marks of third parties." Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-0879.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
On the preliminary matter of the true identity of the Respondent, the Panel accepts the detailed submissions of the Complainant on this point, as set out above. The Panel finds that all the disputed domain names were registered and are held by a single entity. That single entity variously employs the different names, namely, Kim Hyeonsuk, Kim H. Suk, Domain Bar, Young N. and Kang M.N in relation to the disputed domain names.
A. Identical or Confusingly Similar
None of the disputed domain names are identical to any of the Complainant's relevant trademarks. However, each of the disputed domain names wholly incorporates one of those trademarks. Each of the Complainant's relevant trademarks (VW, GOLF, AUDI, DUCATI) is highly distinctive for the respective goods/services, and the incorporation of either a generic term ("service", "mania") or a string of letters is not apt to distinguish the disputed domain names from the Complainant's relevant trademark. Furthermore, the addition of some of the strings ("gs", "ts" and "iv" to the mark "golf") further reinforces the impression of some legitimate connection with the Complainant, as they evoke various models of the Volkswagen Golf motorcar. In the disputed domain names <auditex.com> and <ducatisti.com> the distinctive trademarks of the Complainant (AUDI and DUCATI) appear as the first and most striking part of the disputed domain name, and the addition of "tex" and "sti" respectively do not represent any meaning or suggestion other than an association with the trademarks concerned, or result in any known generic term. They do nothing other than evoke the Complainant's trademarks and suggest the existence of a link or relationship with the Complainant which does not in fact exist.
Therefore the Panel holds that the disputed domain names are each confusingly similar to the Complainant's respective trademarks.
B. Rights or Legitimate Interests
The Complainant has not licensed or authorized the Respondent to use or incorporate its trademarks in any domain name. There is no existing relationship between the Complainant and the Respondent, nor is the Respondent known by, or engaged in any legitimate business in relation to any of the Complainant's relevant trademarks. The fact that the disputed domain names direct Internet users to websites where links to competing products are displayed, or to a site where domain names incorporating high profile trademarks are for sale by others than the trademark owner, is not apt to vest any rights or result in the recognition of a legitimate interest in the disputed domain names on the part of the registrant. Further, in relation to one of the domain names, the Respondent, presumed to be one and the same person who also registered the other disputed domain names, communicated with the Complainant in a manner which indicates a desire to gain financially from reselling domain names to trademark owners whose marks have been used without authorization. This is classic cybersquatting rather than any activity which gives rise to a justifiable claim of right or legitimate interest, and there are also indications before the Panel that the Respondent has engaged in a course of such behavior in the past.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant's contention that one single entity is responsible for the registration of all the disputed domain names. That ipso facto implies a concerted attempt to disguise the true ownership of the domain names at issue and to hide the fact that they are under single control. Further, each of the disputed domain names was registered at a time when the incorporated trademarks of the Complainant had a well-established reputation around the world and certainly in the U.S. The correspondence with the Respondent indicates that the latter was well aware of the reputation that attaches to each of the trademarks incorporated in the disputed domain names. Further, the Respondent made an attempt in correspondence with the Complainant's representative to turn at least one of the disputed domain names to his account by suggesting a willingness to part with it for a high price.
The websites to which the disputed domain names resolve have either been ones where click-through royalties are being generated, or that link to "www.domainbar.com" where domain names incorporating high profile trademarks are offered for sale. None of these activities are indicative of good faith registration or use of a domain name incorporating another party's trademarks.
Therefore the Panel holds that the disputed domain names were registered and 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 names <audiplus.com>, <auditex.com>, <ducatisti.com>, <golfiv.com>, <gsgolf.com>, <tsgolf.com>, <vwmania.com> and <vwservice.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: November 4, 2014