WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. M Haseeb Taqi
Case No. D2015-0517
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is M Haseeb Taqi of Karachi, Singh, Pakistan.
2. The Domain Name and Registrar
The Disputed Domain Name <volkswagen-cars.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2015. On March 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 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"), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 30, 2015. The Respondent did not acknowledge the Complaint nor respond in any way. Accordingly, the Center notified the Respondent's default on May 4, 2015.
The Center appointed Philip N. Argy as the sole panelist in this matter on May 15, 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 paragraph 7 of the Rules.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, mostly taken from the Complaint, remain uncontested.
The Complainant was founded on May 28, 1937 and is one of the world's leading manufacturers of cars. The Volkswagen Group sales revenue in 2013 totaled EUR 197 billion.
The VOLKSWAGEN trademark is registered around the world in respect of goods and services in most of the 45 classes under the Nice Classification. Of particular relevance to this proceeding is the VOLKSWAGEN trademark number 26113 registered since August 21, 1956 in Pakistan, in class 12.
The Complainant owns numerous domain names throughout the world. In particular, under the ".pk" country code Top-Level Domain ("ccTLD") it owns the domain name <volkswagen.com.pk>.
The Respondent registered the Disputed Domain Name on July 1, 2014. It resolves to a page directing users to a link farm parking page at "www.online-car-auctions.com". That page includes a substantial number of links to vehicle resellers' websites, not connected in any way with the Complainant, and offering vehicles of various brands, including direct competitors of the Complainant. That page also includes links to providers of ancillary services, such as credit services.
From the evidence submitted by the Complainant, it appears that the Respondent has a history of registering other domain names in bad faith that infringe famous marks of third parties.
5. Parties' Contentions
The Complaint alleges (i) that the Disputed Domain Name is identical or at least confusingly similar to the famous trademarks of the Complainant; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith.
Taking each of the three grounds of the Policy in turn, the Complainant contends as follows.
The only difference between the Disputed Domain Name and the VOLKSWAGEN trademark is that the Disputed Domain Name also contains the word "cars", which is a descriptive term with respect to the Complainant's products bearing the VOLKSWAGEN trademark. Thus, such a modification does not diminish the confusing similarity between the Disputed Domain Name and the Complainant's trademarks.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. The Respondent is in no way connected with the Complainant, nor with its subsidiaries.
The Respondent is not commonly known by the Disputed Domain Name. Based on the fame and reputation of the VOLKSWAGEN mark and the advertising activities of the Complainant all over the world, the Complainant submits that "it can be concluded beyond any doubt" that the Respondent purposefully created a domain name, which consists of a variation of the Complainant's famous mark, and registered it to create the misleading impression of being in some way associated with the Complainant, which is not the case. The Respondent was and is "quite obviously" trying to exploit the fame and reputation of the Complainant's trademarks. The possible aim was to attract to the Respondent's website Internet users looking for information on the Complainant and divert them from legitimate websites of the Complainant. The Respondent had no legitimate reason for registering the Complainant's trademark as a domain name. He has registered and is using the Disputed Domain Name illegitimately. The Complainant also negates any of the "defences" available under paragraph 4(c) of the Policy.
The Complainant sent a cease and desist letter to the Respondent on March 2, 2015. The Respondent never responded to this correspondence. The Respondent must have been aware of the Complainant's famous marks when he deliberately registered the Disputed Domain Name. Creating a domain name by using a well-known trademark in which the Respondent has no rights is misleading Internet users. The Respondent's obvious purpose was to misleadingly divert consumers to the website under the Disputed Domain Name, causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant. It is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and his trademarks for a commercial gain.
Furthermore, the Respondent is the registrant of at least 555 other domain names, many of which contain third parties' trademarks. The Complainant gives the following exemplar domain names containing third parties' trademarks, in which the Respondent "obviously" has no rights: <dodge-diesel.com>, <disney-cruise.com>, <toyota-highlander.com>, <toyotatacomaforsale.com>, <iphone-ios.com>, <james-perse.com>, <viagrareviews.com>.
As a demonstration of the Respondent's familiarity with the Policy, the Complainant draws to the Panel's attention the proceedings concerning the domain name <discover-credit-card.com> filed by Discover Financial Services against the Respondent with another UDRP service provider. In that case – which the Complainant says has a factual background analogous to the present case – the panel ordered the transfer of that domain name to its rightful owner (Discover Financial Services v. M Haseeb Taqi, NAF Claim No. 1580428).
The Respondent did not reply to the Complaint.
6. Discussion and Findings
The Complainant bears the onus of proof on all elements of the Policy. Accordingly, in the context of this particular case, it is for the Complainant to persuade the Panel, on the balance of probabilities, that the Disputed Domain Name <volkswagen-cars.com> is identical or confusingly similar to its VOLKSWAGEN trademark, that the Respondent has no right or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith.
The Panel will consider each of these grounds in turn.
A. Identical or Confusingly Similar
Although the Complainant's VOLKSWAGEN trademark is wholly contained within the Disputed Domain Name, the addition of the term "cars" renders it sufficiently different to avoid a finding of identicality. However, for the reasons given by the Complainant in its submission, the addition of the descriptive term "cars" does nothing to dissociate the Disputed Domain Name from the Complainant or counteract the association engendered by the inclusion of its famous VOLKSWAGEN trademark. On the contrary, the reference to cars, being the product with which the Complainant's mark is most famously associated, only serves to corroborate the association.
Accordingly, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's VOLKSWAGEN trademark.
B. Rights or Legitimate Interests
The website to which the Disputed Domain Name resolves, either directly or as a result of clicking through further hyperlinks there displayed, offers for sale products not associated with the Complainant as well as products bearing the VOLKSWAGEN brand. That conduct creates no rights or legitimate interests on which the Respondent can rely. The Respondent did not reply to the Complainant's contentions, and therefore has not provided any evidence or arguments to prove his conduct or rebut the Complainant's allegations on this limb of the Policy. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
Absent a Response, the only facts available to the Panel in this case are those provided by the Complainant according to which the Respondent registered the Disputed Domain Name in bad faith with a view to generating profits from click-through revenue from the link farm landing page to which the Disputed Domain Name resolves. The Panel is of the view that the Respondent is leveraging the Complainant's VOLKSWAGEN trademark portion of the Disputed Domain Name to attract Internet users to that website for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy. This constitutes evidence of both bad faith registration and bad faith use of the Disputed Domain Name, for the purposes of paragraph 4(a)(iii) of the Policy.
In addition, the Complainant has adduced evidence of a pattern of conduct on the part of the Respondent, including a previous adverse decision under the Policy, which demonstrates a level of understanding of the domain name system and indicates bad faith in registering and using domain names. From the evidence submitted by the Complainant, the Panel concludes that the Respondent is a cybersquatter.
Therefore, the Panel finds that the Complainant has made out the third limb 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-cars.com> be transferred to the Complainant.
Philip N. Argy
Date: May 29, 2015