WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Aktiengesellschaft and Dr. lng. h.c. F. Porsche Aktiengesellschaft v. rc, sami salem
Case No. D2014-2180
1. The Parties
The Complainants are Volkswagen Aktiengesellschaft (“Complainant 1”) of Wolfsburg, Germany and Dr. lng. h.c.F. Porsche Aktiengesellschaft (“Complainant 2”) of Stuttgart, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is rc, sami salem of Yonkers, New York, United States of America (“U.S.”).
2. The Domain Names and Registrars
The disputed domain name <porschehybrid.com> is registered with GoDaddy.com, LLC and the disputed domain name <vwhybrid.com> (individually each the “Domain Name” and together the “Domain Names”) is registered with Wild West Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2014. On December 15, 2014, the Center transmitted by email to the registrars a request for registrar verification in connection with the disputed domain names. On December 15, 2014, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <porschehybrid.com> and providing the contact details. On December 16, 2014, Wild West Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <vwhybrid.com> 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 December 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2015.
The Center appointed David Stone as the sole panelist in this matter on January 30, 2015. 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.
In accordance with the Complainants’ request, the Panel finds that the Complainants, as related entities, may bring this Complaint as a single consolidated complaint against the Respondent.
4. Factual Background
The Complainants have been engaged in the design, engineering, manufacture, and distribution of passenger and sports cars as well as ancillary services for almost 80 years. The Complainants have traded under variations of their present names, Volkswagen and Porsche, since the 1930s. The Complainants operate globally.
Complainant 1 is the registered proprietor of a number of trade mark registrations comprising the “VW” name, including, for example, U.S. trade mark registration No. 2992649 registered on December 23, 2003 for VW (word) with respect to vehicles in class 12 of the Nice Classification.
Complainant 2 is the registered proprietor of a number of trade mark registrations comprising the PORSCHE name, including U.S> trade mark Registration No. 0618933, registered on January 10, 1956 for PORSCHE (word) registered with respect to vehicles in class 12 of the Nice Classification.
The Domain Names were created on August 7, 2009 (<www.vwhybrid.com>) and September 5, 2007 (<www.porschehybrid.com>), respectively, and are registered in the name of the Respondent, rc, sami salem. The Respondent is based in New York, U.S.
5. Parties’ Contentions
The Complainants contend that the Domain Names are identical or confusingly similar to their VW and PORSCHE registered trade marks.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the Domain Names, the Complainants having granted no permission to the Respondent to use their registered marks, and none of the examples set out in paragraph 4(c) of the Policy are applicable.
Further, the Complainants contend that the Domain Names were registered and are being used in bad faith, including because the Respondent registered the Domain Names in order to prevent the Complainants from reflecting their marks in corresponding domain names, the Respondent also having engaged in a pattern of such conduct; the Respondent’s purpose in acquiring the Domain Names was to sell them in excess of out-of-pocket costs; the Respondent sought to disrupt the Complainants’ businesses by registering the Domain Names; the Respondent registered the Domain Names in order to increase its advertising revenue as a result of increased footfall; and that other indicators of the Respondent acting in bad faith include its prior knowledge of the famous trade marks of the Complainants, the Respondent’s passive holding of the Domain Names and the Respondent’s history of proceedings under the Policy.
The Respondent has failed to respond to the Complaint within the required deadline, and was accordingly issued a Notification of Respondent Default on January 20, 2015.
The Respondent has indicated by email to the Center on January 20, 22, and 30, 2015 that it has offered to transfer the Domain Names to the Complainants in exchange for a payment of USD 800. The Respondent has not commented on the substance of the Complaint in its communications, and the Complainants have not indicated acceptance of the settlement offer.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainants must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainants provided evidence that they have prior registered rights in the marks VW and PORSCHE around the world, including in the U.S. where the Respondent is based. From the evidence supplied, the Panel finds that VW and PORSCHE are well-known marks, at least in relation to motor vehicles. Several other UDRP panels have made similar findings (e.g.,Volkswagen AG v. Milas Auto, WIPO Case No. DTV2006-0003; Volkswagen AG v. Aditya Roshni, c/o Web Services Party, WIPO Case No. D2013-0635; and Dr. lng. h.c. F. Porsche AG v. J Hitt, WIPO Case No. D2014-1681).
The Domain Names incorporate the Complainants’ trade marks in their entirety. The addition of the descriptive suffix “hybrid” does not impact on the overall impression of the words “vw” and ”porsche”. Previous UDRP panels have held that adding common terms (as is the case here) to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (see Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; and Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820).
Accordingly, the Panel finds that the Complainants have established the first element under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Although it is up to the Complainant to prove all three elements of the Policy as set out under paragraph 6.A. above, it is now well-established that it is sufficient for the Complainant to prove with regard to this second element that there is a prima facie case for the Respondent to answer. The Panel will then assess the Respondent’s rights and legitimate interests in the Domain Names on the basis of its Response.
The Complainants contend that the Respondent does not operate a business or offer any goods or services on the websites under the Domain Names. The Complainants contend that the Respondent is using the Domain Names to benefit from the Complainants’ good reputations in order to increase advertising revenue from the sponsored links hosted on the websites.
The Complainants also contend that the Respondent is not commonly known by the names VW, www.vwhybrid.com, Porsche, or www.porschehybrid.com.
The Complainants contend that the Respondent is not engaged in non-commercial or fair use in relation to the websites under the Domain Names. The Complainants contend that the Respondent must have been aware of the Complainants’ trade marks due to the Complainants’ reputations and that the use of the generic term “hybrid”, which is related to the Complainants’ businesses, is a further indication of this. The Complainants contend that the Respondent’s use is not fair, as the Respondent intends to increase its advertising revenue by leveraging the Complainants’ reputations, without any right or justification for doing so, and that the Respondent’s actions are tarnishing the Complainants’ trade marks. The Complainants contend that the Respondent’s failure to use the websites under the Domain Names for its own content is further indication that there is no non-commercial use giving the Respondent a right or legitimate interest in the Domain Names.
The Panel is satisfied that the Complainants have made out a prima facie case under this element of the Policy. As the Respondent has failed to respond, the Panel finds that the Complainants have established the second element under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants contend that the Respondent has registered and used the Domain Names in bad faith.
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith. Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarised as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rightsholder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given the fame of the VW and PORSCHE marks for motor vehicles, including in the U.S. where the Respondent resides, the Panel finds that in all likelihood the Respondent would have been aware of the Complainants’ trade marks at the time it registered the Domain Names. This is emphasized by the Respondent’s use of the relevant industry term “hybrid” within the Domain Names. The Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainants’ marks.
Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) 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 Domain Name <www.vwhybrid.com> be transferred to Complainant 1, and that the Domain Name <www.porschehybrid.com> be transferred to Complainant 2.
Date: February 11, 2015