WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Domain Admin, whoisprotection.biz / Erdi Erkan

Case No. D2015-0118

1. The Parties

The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.

The Respondent is Domain Admin, whoisprotection.biz of Istanbul, Turkey / Erdi Erkan of Istanbul, Turkey, self-represented.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.kim> (the "Domain Name") is registered with FBS Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2015. On January 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 26, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2015 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 February 9, 2015.

On February 9, 2015, the Complainant requested English to be the language of proceeding. On February 11, 2015, the Respondent agreed for English to be the language of proceeding.

On February 13, 2015, the Center received the Complainant's suspension request, and the proceeding was suspended on the same day. On March 13, 2015, the Center received the Complainant's request for reinstitution of the proceeding. On March 13, 2015, the Center received the Respondent's email communication. On March 18, 2015, the Complainant confirmed its request for reinstitution of proceeding.

The Center verified that the Complaint together with the amendment to 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 March 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2015. The Center did not receive any formal Response.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on April 27, 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 Volkswagen Group with its headquarters in Wolfsburg, Germany, including subsidiaries Audi, Bentley, Bugatti, Lamborghini, MAN, Porsche, Scania, Seat and Ŝkoda, is one of the world's leading automobile manufacturers and for two decades has been the largest carmaker in Europe. The Complainant's products have been marketed throughout the world under the trademarks VOLKSWAGEN and VW (the "VOLKSWAGEN Mark").

The Complainant is, inter alia, the owner of numerous national, European and international registrations of the VOLKSWAGEN Mark.

The Group operates 100 production plants in 18 European countries and nine other countries in the Americas, Asia and Africa. Approximately 550,000 employees work worldwide for the Complainant's Group and produce each working day approximately 37,500 vehicles worldwide. The Volkswagen Group sells its vehicles in 153 countries.

Furthermore, the Complainant is in 2012 listed number 9 of the world's largest corporations in the ranking of the Fortune Global 500. The Fortune Global 500 in an annual ranking of the top 500 corporations worldwide as measured by revenue. The list is completed and published annually by Fortune magazine.

The Domain Name was registered on November 17, 2014.

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its VOLKSWAGEN Mark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.

The Complainant contends that this registration is clear case of an abusive registration within the meaning of sub-paragraphs 4(b)(iii) and (iv) of the Policy.

B. Respondent

On March 13, 2015, the Respondent requested that the Domain Name be transferred to Complainant. Despite the suspension of proceedings requested by the Complainant, the Respondent failed to take any action for the transfer of the Domain Name during suspension period as it did not check its emails.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

6.1. Language of the Proceedings

Pursuant to paragraph 11(a) of the Rules, unless 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. The Registrar has confirmed that the registration agreement is in Turkish in this case. The Complaint was filed in English and the Complainant has requested English to be the language of the proceeding. The Respondent has formally agreed that the administrative proceeding be conducted in English. Therefore, the Panel considers that as agreed by the parties the language of proceeding is English.

6.2. Effect of the unilateral consent to transfer by the Respondent

The Panel must decide whether to grant a "unilateral transfer" as requested by Respondent. Several prior UDRP decisions show that it is the panel's discretion to choose "unilateral transfer" or to address the conditions for transfer under paragraph 4(a) of the Policy. See, e.g., Vienna Beef Ltd. v. Texas International Property Associates, WIPO Case No. D2007-1133 (where there is a finding that a full discussion of the merits was appropriate despite Respondent's alleged willingness to unilaterally transfer).

Although the Panel has the authority to order a transfer based on Respondent's consent without further analysis, the Panel has decided to address the merits in this case. The Panel considers it wise in the circumstances of this case, absent a signed stipulation between the parties or a withdrawal of the Complaint, to proceed to consider the merits of the case noting also that the Complainant requested the cancellation of the Domain Name whereas the Respondent proposed to transfer the Domain Name.

A. Identical or Confusingly Similar

The Domain Name comprises the Complainant's well-known trademark VOLKSWAGEN and the generic top-level domain suffix ".kim". The Panel notes that the gTLD ".kim" means "who" in Turkish. Both visually and phonetically the Domain Name and the trademark are identical. The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of a lack of Respondent's rights or legitimate interests in the mark. The Response makes no effort to demonstrate any rights or legitimate interests in the Domain Name. Accordingly, the Panel determines the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant's contention that the trademark VOLKSWAGEN is without any doubt a well known trademark. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).

The Respondent has registered the Domain Name but has not put it to any material use. Thus the Respondent is holding the Domain Name passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant has established the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <volkswagen.kim> be cancelled.

Emre Kerim Yardimci
Sole Panelist
Date: May 11, 2015