WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Song Hai Tao
Case No. D2015-0006
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Song Hai Tao of China.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.wang> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2015. On January 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2015, 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.
On January 9, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 12, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on February 17, 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.
4. Factual Background
The Complainant’s predecessor company was established on May 28, 1937 in Berlin, Germany. The Complainant is today headquartered in Wolfsburg, Germany, and is one of the world’s leading automobile manufacturers. The Complainant Group operates 107 production plants in 19 European countries and a further nine countries in the Americas, Asia and Africa. Its worldwide employee count is approximately 572,800.
The Complainant’s products have been marketed throughout the world under the trade mark VOLKSWAGEN and VW for at least 60 years. In 2013, the Complainant Group delivered 9.7 million vehicles to customers, corresponding to a 12.8% share of the world passenger car market. In Western Europe, almost one in four new cars comes from the Complainant Group. The Complainant’s sales revenue in 2013 totaled EUR 197 billion. The Complainant was ranked eighth in the Fortune Global 500 list of the world’s largest corporations.
The Complainant owns national, European and international registrations for the VOLKSWAGEN trade mark.
The disputed domain name was registered on June 30, 2014. No content is displayed on the website to which the disputed domain name resolves.
A cease and desist letter was sent to the Respondent by email on November 3, 2014. The Respondent did not respond.
5. Parties’ Contentions
(1) The disputed domain name is identical or, at least, confusingly similar to the Complainant’s VOLKSWAGEN trade mark. It combines the Complainant’s famous mark in its entirety and the generic Top-Level Domain (gTLD) “.wang”. “Wang” is a transliteration of the Chinese character meaning “website” or “portal” and therefore functions as a descriptive term. Moreover, it is well established that the gTLD should be disregarded for the purpose of comparison and determination of whether a domain name in dispute is identical or confusingly similar to a trade mark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not operate a business or offer any goods or services on the website to which the disputed domain name resolves. He has failed to make any active use of the disputed domain name. This does not constitute a bona fide offering of goods or services.
The Respondent is also not commonly known by the name “Volkswagen” or “Volkswagen.wang”. He has no apparent connection to the disputed domain name and has no permission or licence from the Complainant to apply for or use any domain name incorporating such a mark.
The disputed domain name was registered a day after the launch of the general available period for “.wang”, which demonstrates that the Respondent does not have a legitimate trade mark to be registered as a domain name ahead of the general public. It is not possible to think of a fair use of the disputed domain name as it is obviously confusing and diverting in effect. The Complainant’s VOLKSWAGEN trade mark was validated by the Trademark Clearinghouse (“TMCH”), as a result of which the Respondent would have been given a trademark claims notice of the Complainant’s rights in the VOLKSWAGEN trade mark.
(3) The disputed domain name was registered and is being used in bad faith. Given the fame of the Complainant’s VOLKSWAGEN trade mark, the Respondent must have intended to attempt to profit by the deliberate diversion of Internet users who may want to acquire automobiles of the Complainant or to search for information on the Complainant and its automobiles. The website being inactive will have a negative effect on the Complainant’s business as Internet users may possibly stop looking for the Complainant online. This is disruptive to the Complainant’s business. The style of the disputed domain name is, in itself, sufficient evidence of an intention to attract Internet traffic by confusion with the Complainant’s trade mark. The VOLKSWAGEN mark was registered with the TMCH meant that the Respondent would have received a warning notice when attempting to register the disputed domain name. In any case, the disputed domain name was registered decades after the Complainant had registered its marks in countries across the world.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complainant requested that English be the language of the proceeding for the reason that “the disputed domain name is made up of letters in Ascii-Script and can be pronounced phonetically in English”.
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Notwithstanding paragraph 11(a) of the Rules, the Panel has to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case (paragraph 10(b) and (c) of the Rules). The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay. The Respondent was given a fair opportunity to present his case and to respond on the issue of the language of the proceeding and but has chosen not to. On the other hand, requiring the Complainant to translate all the evidence into Chinese would place a very high cost burden on it and unduly delay the proceeding. The Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding. The Panel therefore concludes that English should be the language of the proceeding.
B. Identical or Confusingly Similar
The Complainant has established it has rights in the trade mark VOLKSWAGEN. The Panel additionally agrees that VOLKSWAGEN is a well-known trade mark. The only difference between the disputed domain name and the Complainant’s mark is the gTLD “.wang”. The Panel finds that the disputed domain name is identical to the Complainant’s mark as VOLKSWAGEN is incorporated in its entirety in the disputed domain name and it is a well-established principle that elements such as “.com”, “org” or, in this case, “.wang”, may be disregarded when determining if there is identity or confusing similarity.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that:
“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 Complainant is required to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once that has been established, the burden of production shifts to the Respondent to show that he has rights or legitimate rights or interests in the disputed domain name. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
It is not in dispute that the Complainant did not license or otherwise authorize the Respondent to use the trade mark VOLKSWAGEN and there is no evidence that the Respondent is known by the name “Volkswagen” which the name of a well-known mark. Neither is there any evidence of a bona fide offering of goods or services by the Respondent following the registration of the disputed domain name. There is therefore a prima facie case of a lack of rights or legitimate interests which the Respondent has not rebutted by way of a Response.
In the circumstances and in accordance with paragraph 15(a) of the Rules, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Consequently, the Panel finds that the paragraph 4(a)(ii) the Policy is also fulfilled.
D. Registered and Used in Bad Faith
Taking into account the undeniable reputation and fame of the VOLKSWAGEN mark and the fact that this mark has been incorporated in its entirety in the disputed domain name, the Panel concludes that the Respondent must have known of the Complainant and of its VOLKSWAGEN trade mark when he registered the disputed domain name. The wholesale adoption of a well-known mark into a domain name by someone with no apparent connection with the name suggests opportunistic bad faith. (See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Moreover, as pointed out by the Complainant, the Respondent would have been apprised by the TMCH of the Complainant’s rights in the VOLKSWAGEN mark when he registered the disputed domain name. Notwithstanding this, he persisted with the registration. The Panel notes that the disputed domain name is held passively. Previous UDRP panels have found that such use does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Having regard to the circumstances of this case, the Panel considers it more likely than not that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not respond and in the absence of any evidence by the Respondent or a satisfactory and credible explanation of how the registration and use of the disputed domain name which incorporates the well-known VOLKSWAGEN mark have not been in bad faith, the Panel finds that paragraph 4(a)(iii) of the Policy has also been satisfied.
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.wang> be transferred to the Complainant.
Date: February 28, 2015