WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG, Dr. Ing. h.c. F. Porsche AG and Automobili Lamborghini S.p.A. v. Kazim Uslu
Case No. D2015-0119
1. The Parties
The Complainants are Volkswagen AG of Wolfsburg, Germany (“Complainant Volkswagen”), Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany (“Complainant Porsche”) and Automobili Lamborghini S.p.A. of Bolognese, Italy (“Complainant Lamborghini”), represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Kazim Uslu of Salzburg, Austria.
2. The Domain Names and Registrar
The disputed domain names <volkswagen.help>, <porsche.help> and <lamborghini.help> are registered with Dynadot, LLC (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 disputed domain names. On January 26, 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.
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 proceeding commenced on February 4, 2015. The Complainants requested a suspension of the administrative proceeding for 30 days in order to explore a settlement on February 5, 2015. The administrative proceeding was suspended on February 6, 2015. On March 6, 2015 the Complainants requested re-institution of the proceeding. On March 9, 2015, the proceeding was reinstituted.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2015. On March 18 and 26, 2015, the Center received emails from the Respondent. The Center notified the parties about the commencement of panel appointment process on March 30, 2015.
On April 1, 2015, the Center received a supplemental filing from the Complainants. On April 2, 2015, the Center received a supplemental filing from the Respondent. The Center acknowledged receipt of both, and informed the parties that they would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject them.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 10, 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
Complainant Volkswagen is a company registered in Germany. Complainant Porsche is a company registered in Germany and is a 100% subsidiary of Complainant Volkswagen. Complainant Lamborghini is an Italian corporation and is also, ultimately, effectively 100% owned by Complainant Volkswagen.
Complainant Volkswagen is the owner of registrations for the trademark VOLKSWAGEN in various territories throughout the world. Its registrations include, for example, Community Trade Mark number 703702 for VOLKSWAGEN, filed on December 12, 1997 in a total of 42 classes.
Complainant Porsche is the owner of registrations for the trademark PORSCHE in various territories throughout the world. Its registrations include, for example, Community Trade Mark number 11737368 for PORSCHE, filed on April 15, 2013 in a total of 28 classes.
Complainant Lamborghini is the owner of registrations for the trademark LAMBORGHINI in various territories throughout the world. Its registrations include, for example, Community Trade Mark number 1098383 for LAMBORGHINI, filed on March 8, 1999 in a total of 12 classes.
The Community Trade Marks referred to above include protection in Austria, being the country of domicile of the Respondent.
The Respondent registered all three of the disputed domain names on November 25, 2014.
According to evidence submitted by the Complainants, on January 23, 2105, all three of the disputed domain names resolved to an apparently inactive website at “www.mutfak.com” which did not include any substantive content.
In the course of correspondence between the parties in January 2015, the Respondent stated that his 16-year-old son had registered the disputed domain names because of his interest in cars, but the Respondent was ready to transfer the disputed domain names to the Complainants. While the Complainants agreed to pay the Respondent’s documented out-of-pocket costs relating to the registrations, the Respondent submitted an invoice for hosting charges in the sum of USD 480 which the Complainants declined to accept. Accordingly, no agreement was reached.
5. Consolidation of Proceedings
The Complainants submit that, although there are three separate Complainants in this case, it is appropriate for the claims to be consolidated.
The criteria for consolidation of multiple complaints against a single respondent are considered in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and contemplate situations in which (i) the complainants either have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
The Complainants submit that they have a specific common grievance against the Respondent because Complainant Volkswagen is the ultimate owner of all three of the trademarks in issue, all three of the disputed domain names were registered on the same date, and all three resolve to the same website. As to equity and procedural efficiency, the Complainants submit (among other matters) that they are jointly represented and that their substantive arguments are common to each of the three disputed domain names. The Respondent has not contested the application for consolidation of the claims and, for the reasons advanced by the Complainants, the Panel finds that consolidation is appropriate in this case.
6. Parties’ Contentions
A. The Complaint
The Complainants state that the Volkswagen Group was founded on May 28, 1937 and now comprises 12 motor vehicle brands from seven European countries, including the brands Volkswagen, Porsche and Lamborghini. The group delivered over 9.7 million vehicles in 2013 with total sales revenues of EUR 197 billion.
The Complainants state that they are the registrants of numerous domain names incorporating the three trademarks in issue, with their principal international websites at “www.volkswagen.com”, “www.porsche.com” and “www.lamborghini.com”. They state that, owing to their longstanding and extensive worldwide use of the marks VOLKSWAGEN, PORSCHE and LAMBORGHINI, including intensive publicity campaigns, each of the marks has become exclusively associated with the Complainants and have the status of well-known trademarks. The Complainants refer to previous decisions under the UDRP and to the results of searches against each of the three brand names as evidence of the worldwide recognition of the marks.
The Complainants submit that the disputed domain names are confusingly similar to their trademarks VOLKSWAGEN, PORSCHE and LAMBORGHINI. They rely upon the trademark registrations referred to above and provide evidence of additional registrations in various territories for each of the marks. They state that each of the disputed domain names comprises the whole of the relevant trademark together with the generic Top-Level Domain (gTLD) “.help”, which does not diminish the confusing similarity between the disputed domain name and the trademark in each case. They submit that Internet users worldwide would reasonably associate the disputed domain names with the Complainants’ well-known brands and would assume the gTLD “.help” to refer to official websites connected with those brands.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainants say that they have not licensed or otherwise permitted the Respondent to use any of their trademarks for the purposes of domain names or otherwise. They contend that the Respondent is not commonly known by any of the disputed domain names and that his only purpose in registering them was to imply an association with the Complainants. The Complainants further submit that the Respondent is unable to show any of the circumstances set out in paragraph 4(c) of the Policy that may demonstrate rights or legitimate interests in the disputed domain names.
The Complainants submit that the Respondent registered and is using the disputed domain names in bad faith.
The Complainants submit that any or all of the criteria set out in paragraph 4(b) of the Policy as evidencing bad faith are applicable in this case. In particular, the Respondent has registered domain names incorporating the Complainants’ well-known trademarks and has used the disputed domain names as “jump” pages to redirect Internet users to a website at “www.mutfak.com”. The Complainants submit that the Respondent must have been aware of the Complainants’ well-known trademarks at the date of registration of the disputed domain names and that the registration of well-known trademarks by a party that has no connection with the trademark owner is, in itself, a strong indication of bad faith (Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085). The disputed domain names were intended to create an association with the Complainants’ trademarks and misleadingly to divert Internet users who are interested in the Complainants’ products to the Respondent’s website for commercial gain. It is not of significance that the “landing page” to which the disputed domain names direct is currently inactive, because the disputed domain names themselves are instruments of abuse and the Complainants should not have to await some specific abusive use in the future (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615).
The Complainants seek the transfer of the disputed domain names to the relevant Complainant in each case.
B. The Response
The Respondent did not file a formal Reply to the Complainants’ contentions. However, the Respondent was in communication with the Center by email on March 18 and March 26, 2015 and requested that these communications be deemed to constitute his Response. The Panel notes that these communications were received within the time allowed for the Response and accepts that the communications should stand as the Response in the matter.
The Respondent states that the disputed domain names were available for general purchase and that his son purchased them because he was interested in cars.
The Respondent exhibits his communications with the Complainant referred to above and complains of the Complainants’ conduct in connection with the relevant settlement negotiations. He claims in particular to have been deceived by the Complainants. He states that he was willing to comply with the terms that had been agreed and that he had signed relevant forms, but that the Complainant then refused to pay the invoice he submitted.
C. Supplemental Filings
The Complainants submitted a supplemental filing to the Center on April 1, 2015. While the Complainants state that the filing is intended to respond to the Respondent’s case, the Policy and Procedure do not provide for a reply of this nature in normal circumstances. While a panel may admit a supplemental filing pursuant to paragraph 12 of the Rules, it would generally be necessary for the complainant to show that the submissions in question could not have been made in its complaint or that there are exceptional circumstances to justify the supplemental filing (paragraph 4.2 of the WIPO Overview 2.0). The Panel does not consider that any such circumstances are present in this case and will therefore disregard the Complainants’ supplemental filing.
In the circumstances, the Panel will also disregard a supplemental filing received from the Respondent on April 2, 2015.
7. Discussion and Findings
In order to succeed in their Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have demonstrated that they are the owners of registrations in numerous territories for the trademarks VOLKSWAGEN, PORSCHE and LAMBORGHINI. The Panel also accepts that the trademarks in question represent the brand names of well-known motor manufacturers and enjoy a significant level of recognition worldwide. Each of the disputed domain names comprises one of the trademarks referred to above, in an unadorned form, together with the gTLD “.help”. In the view of the Panel, the gTLD “.help” does not serve in any manner to distinguish the disputed domain names from the Complainants’ well-known trademarks and the disputed domain names are therefore identical (ignoring the gTLD) or confusingly similar to trademarks in which the Complainants have rights.
B. Rights or Legitimate Interests
On the basis of the submissions made by the Complainants and referred to above, the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Panel must therefore examine whether the Respondent has succeeded in demonstrating that he has any such rights or legitimate interests. In this regard, the Respondent argues first that the disputed domain names were freely available to the public for registration. However, the availability of a domain name for registration does not of itself invest the registrant with rights or legitimate interests in that name for the purposes of the Policy. Secondly, the Respondent states that his 16-year-old son registered the disputed names because of his interest in cars. However, the Respondent provides no explanation of how the disputed domain names were intended to be used and does not, for example, demonstrate any preparations to use the disputed domain names for the purposes of fan sites or in connection with any other legitimate noncommercial purpose. Nor would any such intended use be consistent with the fact that all three of the disputed domain names have resolved to an inactive website at “www.mutfak.com”. Accordingly, the Panel finds no basis to conclude that the Respondent has any rights or legitimate interests in respect of the disputed domain names and finds that the Respondent has no such rights or legitimate interests.
C. Registered and Used in Bad Faith
The Panel accepts the Complainants’ submission that the Respondent must have been aware of the Complainants’ well-known trademarks at the time he registered the disputed domain names: indeed, the Respondent admits as much by stating that the disputed domain names were registered because of his son’s interest in cars. Given that the Complainants’ trademarks are well-known and that the Respondent has no legitimate connection with the Complainants or its trademarks, the Panel infers that the Respondent registered the disputed domain names in the light of the significant reputation and goodwill that attached to each of the trademarks and with the intention of taking advantage of the Complainants’ goodwill in those marks. The disputed domain names constitute, respectively, the Complainants’ trademarks VOLKSWAGEN, PORSCHE and LAMBORGHINI together with, in each case, the gTLD “.help” and in these circumstances the Panel considers it inevitable that a substantial number of Internet users would believe the disputed domain names, and any website to which they resolved, to be operated or at any rate authorized, by the Complainants. While the Panel notes that the disputed domain names have resolved to an inactive website, it is well established that the “passive holding” of a domain name is consistent with a finding of bad faith use if it “is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Given the worldwide fame of all three trademarks comprising the disputed domain names and the failure of the Respondent to demonstrate any intended good faith plans for his use of the names, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
D. Other Matters
The Panel will deal briefly at this point with the Respondent’s complaints concerning the Complainants’ conduct of the settlement negotiations referred to above. While the Complainants agreed to pay the Respondent’s out-of-pocket costs in connection with the relevant registrations, the Panel is not of the view that apparent hosting charges of USD 480 would fall within the scope of this offer or that the Complainants behaved improperly in declining to agree to make this payment. Accordingly, there is nothing in these submissions by the Respondent that affects the findings and the decision of the Panel under the terms 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 names <volkswagen.help>, <porsche.help> and <lamborghini.help> be transferred to Complainants Volkswagen, Porsche and Lamborghini respectively.
Steven A. Maier
Date: April 16, 2015