WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Domain Administrator Ename.Guru Inc.
Case No. D2014-1784
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Domain Administrator, Ename.Guru Inc. of Ocala, Florida, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <volkswagen.reviews> is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2014. On October 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2014, the Registrar 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 October 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2014. A communication was received from the Respondent on November 7, 2014. The Complainant filed a supplemental filing on November 14, 2014.
The Center appointed Cherise Valles as the sole panelist in this matter on November 17, 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 headquartered in Wolfsburg, Germany, and is one of the world’s leading automobile manufacturers. It operates 106 production plants in 19 European countries and in a further nine countries in the Americas, Asia and Africa. It sells its vehicles in 153 countries. The Complainant’s sales revenue in 2013 totaled EUR 197 billion. Finally, the Complainant was ranked as the eighth largest corporation in the world by the Fortune Global 500 list for 2014.
The Complainant is the owner of the trademark VOLKSWAGEN, which it uses in connection with its automobile manufacturing services. The Volkswagen brand is one of the most famous brands in the world and has substantial recognition and reputation internationally. The Complainant’s products have been marketed throughout the world under the trademarks VOLKSWAGEN and VW for at least six decades.
The Complainant is the owner of multiple trademark registrations throughout the world, including in Germany and the United States, for the mark VOLKSWAGEN. These include the following:
- German trademark registration No. 621252 for VOLKSWAGEN, registered on February 21, 1949, in classes 1-34;
- German trademark registration No. 398001855 for VOLKSWAGEN, registered on January 2, 1998, in classes 1-43;
- United States trademark registration No. 0617131 for VOLKSWAGEN, registered on May 4, 1954, in class 19;
- European trademark registration No. 2700342 for VOLKSWAGEN, registered on May 17, 2002, in classes 35, 43, 44, 45;
- European trademark registration No. 703702 for VOLKSWAGEN, registered on December 12, 1997, in classes 1-42;
- International trademark registration No. 263239 for VOLKSWAGEN, registered on December 10, 1962, in classes 1,3,8,9,11,12, 17 and 21;
- International trademark registration No. 702679 for VOLKSWAGEN, registered on July 1, 1998, in classes 1-42.
The disputed domain name <volkswagen.reviews> was registered on June 4, 2014.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, VOLKSWAGEN, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not timely reply to the Complainant’s contentions. As stated in section 3 above, the Respondent submitted an email to the Center after the response due date. In this communication the Respondent argues that, because of the inclusion of the generic Top-Level Domain (“gTLD”) “.reviews” in the disputed domain name, Internet users would not be confused into believing that it originates from or is affiliated with the Complainant. The Respondent also states that it “has intentions to develop the [disputed] domain name as a place for consumers to post their reviews of various Volkswagen automobiles.”
6. Discussion and Findings
A. Preliminary Procedural Issue: Untimely Response and Supplemental Filing
The Panel has discretion to consider late-filed responses. Rules, Paragraph 10(d). As the Response was filed close to the deadline and the Respondent does not appear to be represented by legal counsel, the Panel will consider this filing. The Panel will not consider the Complainant’s Supplemental Filing.
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
B. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the VOLKSWAGEN mark. The Complainant is the owner of multiple trademark registrations in the United States and Germany for the trademark VOLKSWAGEN, as indicated in Section 4 above.
Previous UDRP panels have found that gTLDs, including new gTLDs, should typically be disregarded for the purpose of establishing whether a disputed domain name is identical or confusingly similar to a trademark. See, for example, Andreas Stihl AG & Co KG v. Andrew Davis, WIPO Case No. D2014-0576.
Disregarding the gTLD, the disputed domain name is identical to the Complainant’s trademark VOLKSWAGEN. The disputed domain name wholly incorporates the term “volkswagen”, which is identical to the trademark VOLKSWAGEN registered by the Complainant in various countries including the United States and Germany, as indicated in Section 4 above. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy. See, for example, The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010.
In the light of the foregoing, the Panel finds that the disputed domain name <volkswagen.reviews> is identical or confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent is not using the disputed domain name <volkswagen.reviews> to make a bona fide offering of goods or services. No content is displayed on the website for the disputed domain name. The website resolves to a parking site of the registrar NETIM SARL
The Respondent is not commonly known by the name “Volkswagen” or by the disputed domain name <volkswagen.reviews>. The Complainant is the only company entitled to use the trademark VOLKSWAGEN in the United States and Germany, and worldwide. The Complainant submits that the Respondent is not in any way associated with the Complainant and has never received authorization or a license to use the Complainant’s distinctive VOLKSWAGEN mark in any way or manner, including registering a domain name containing the term “volkswagen”.
The Respondent is not making a noncommercial or fair use of the disputed domain name. The Respondent has argued that it intends to use the disputed domain name to host a forum where users can post reviews of the Complainant’s products. However, the Respondent has submitted no evidence to support its claim. The Panel finds that the Respondent’s unsupported allegation of its intended future use of the disputed domain name is insufficient to establish any rights or legitimate interests on the basis of a noncommercial or fair use.
The Respondent, more likely than not, intends to sell the disputed domain name. The Respondent has registered hundreds of domain names and operates a domain auction and buy-it-now platform under the domain name <ename.guru>, where it sells domain names for thousands of dollars.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Respondent’s conduct is captured by paragraph 4(b)(ii) of the Policy. In addition to registering the disputed domain name <volkswagen.reviews>, the Respondent has also registered numerous other domain names including the names of famous trademarks. All of these domain names (except one which was suspended in a URS proceeding) have the same content on the website as the disputed domain name – they are parked on the NETIM SARL parking website. Earlier panels have held that it is sufficient to constitute a pattern of conduct for the purposes of paragraph 4(b)(ii) of the Policy, if, as is the case here, a respondent registers many domain names identical to third-party marks. See, for example, Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO Case No. D2000-0062. This pattern clearly demonstrates bad faith on the part of the Respondent, since the only purpose of these registrations is to prevent the Complainant and other trademark owners from reflecting their famous trademarks in corresponding domain names.
It is more likely than not that the Respondent acquired the disputed domain name primarily for the purpose of selling it. As indicated above, the Respondent operates a domain auctions and buy-it-now platform on the website “www.ename.guru”, where it sells domain names for thousands of dollars. The Respondent’s likely intent to sell the disputed domain name, the value of which derives from the fact that it contains a trademark, further demonstrates the Respondent’s bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 <volkswagen.reviews> be transferred to the Complainant.
Date: December 2, 2014