WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Propaganda Media Pty. Ltd.
Case No. D2015-1255
1. The Parties
Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Sp. Jawna, Poland.
Respondent is Propaganda Media Pty. Ltd. of Hampton Park, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.melbourne> (the “Domain Name”) is registered with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2015. On July 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 26, 2015.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on September 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 the Rules, paragraph 7.
4. Factual Background
Founded in 1937, Complainant is one of the world’s leading automobile manufacturers and the largest carmaker in Europe. In 2013, the Volkswagen Group delivered 9.731 million vehicles to customers, corresponding to a 12.8 percent share of the world passenger car market. The Volkswagen Group sales revenue in 2013 totaled EUR 197 billion.
Melbourne is a city in the State of Victoria, Australia. Complainant sells automobiles to consumers through a number of dealerships in the State of Victoria, including in Melbourne.
Complainant owns numerous trademark registrations and applications consisting of or containing the VOLKSWAGEN mark and covering a broad range of goods and services in 45 trademark classes. As examples, the record shows the following international and national registrations:
1) Volkswagen, International Registration No. 702679, registered July 2, 1998, designating, inter alia, Australia;
2) Volkswagen, Community Trademark No. 009383506, registered February 25, 2011;
3) Volkswagen, Australia trademark No. 767985, registered July 20, 1998.
Complainant is the registrant of a large number of domain names containing the VOLKSWAGEN mark, under both generic and country-code Top-Level Domains, including in particular <volkswagen.com>, and <vw.com>. Complainant, through its wholly-owned subsidiary, Volkswagen Group Australia, obtained domain name registrations under the ccTLD for Australia, i.e. <volkswagen.com.au>.
Respondent, located in Melbourne, Victoria, Australia, is in the business of website design.
Respondent registered the Domain Name on March 2, 2015. The Domain Name presently directs to an inactive website.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to the VOLKSWAGEN trademark, which Complainant owns. Based on Complainant’s long history manufacturing automobiles, including passenger cars, apparatus for locomotion by land, parts thereof and fittings, its tradition and business activity, the VOLKSWAGEN trademark is internationally well-known.
Respondent incorporated Complainant’s trademark in full into the Domain Name, which establishes confusing similarity between the mark and the Domain Name. The only difference between the Domain Name and Complainant’s VOLKSWAGEN trademark is that the Domain Name ends with the generic TopLevel Domain (“gTLD”) “.melbourne”. This addition of a generic descriptive term does not diminish the confusing similarity between the Domain Name and Complainant’s trademark. There is thus a confusing similarity between the Domain Name and Complainant’s trademark.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Specifically, Complainant has not licensed or otherwise permitted Respondent to use Complainant’s trademarks or any variations of those marks, or to register or use any domain name incorporating any of those marks or any variations thereof. Respondent is in no way connected with Complainant or its subsidiaries. Respondent is not commonly known by the Domain Name.
Based on the fame and reputation of the VOLKSWAGEN mark and Complainant’s advertising activities around the world, Complainant concludes beyond any doubt that Respondent purposefully created the Domain Name using Complainant’s famous mark to create the misleading impression of being associated with Complainant, which is not the case. Respondent was and is obviously trying to exploit the fame and reputation of Complainant’s trademark. The possible aim was to attract to Respondent’s website Internet users looking for information on Complainant and divert them from Complainant’s legitimate websites. Respondent had no legitimate reason for registering Complainant’s trademark as a domain name.
Respondent’s registration and use of the Domain Name appears to be part of a commercial strategy. One of the ways of conducting the professional activity by web design agencies may be basically described as “registering the domain names and working on their content in order to sell the above with profit”. Hence, registering and using the Domain Name cannot be associated with noncommercial use or bona fide offering of goods but rather is an indication of the Domain Name’s commercialization. Respondent is making illegitimate use of the Domain Name with intent to mislead and divert Internet users to Respondent’s website.
Complainant contends that the Domain Name was registered and is being used in bad faith, citing the following factors:
Complainant sent Respondent a Cease and Desist Letter on April 28, 2015. Respondent never responded.
The VOLKSWAGEN trademark is famous all over the world. Respondent must have been aware of this fact when it deliberately registered the Domain Name. In registering the Domain Name using Complainant’s well-known trademark, Respondent intends to mislead Internet users. Respondent’s obvious purpose was to mislead and divert consumers to the website under the Domain Name, causing confusion among consumers by creating the impression of a relation with or sponsorship or endorsement of Respondent by Complainant. It is apparent that Respondent’s intent was to exploit Complainant’s reputation and its trademarks. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel considers whether Respondent was given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and the Written Notice in hard copy by courier to Respondent at the addresses provided by the Registrar and in the Complaint. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has rights in its VOLKSWAGEN trademark by reason of longstanding use in commerce dating from 1937 and registration of the trademark internationally and, with respect to this case, in Australia as well.
The Panel accepts Complainant’s contention that its VOLKSWAGEN trademark is in fact a well-known mark around the world, including in Australia. See, e.g., Volkswagen Aktiengesellschaft v. Muqadas Wattoo, WIPO Case No. D2012-1917.
The Domain Name incorporates Complainant’s VOLKSWAGEN trademark in its entirety with correct spelling. This will often be sufficient in itself to establish confusing similarity between the disputed domain name and the complainant’s trademark. See, L’Oreal v. Ana Ring, WIPO Case No. D2013-1826; Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
In this case, the Domain Name and the trademark are not identical in that the Domain Name adds the word “melbourne” as a Top-Level Domain (“TLD”). The addition of what is both a generic TLD and a geographic descriptor does not negate the confusing similarity between the trademark and the Domain Name. Volkswagen Aktiengesellschaft v. Muqadas Wattoo, WIPO Case No. D2012-1917. The geographic term suggests a geographic location of Complainant’s business. Complainant in fact does business through Volkswagen dealerships in the State of Victoria and in Melbourne. The “melbourne” descriptor is not sufficient to distinguish the Domain Name from Complainant’s business and well-known trademark and in fact tends to reinforce the false idea of association with Complainant.
The Domain Name is confusingly similar to Complainant’s VOLKSWAGEN trademark, and Complainant thus has established the first element of its case.
B. Rights or Legitimate Interests
Complainant bears the overall burden of proving that Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However, where Complainant makes a prima facie case that Respondent does not possess such rights or interests, the burden of production shifts to Respondent to demonstrate that it does in fact possess such rights or legitimate interests. Id. Where, as here, Respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or interests, Complainant’s prima facie case will usually be found sufficient to meet Complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
Complainant can make out a prima facie case by negating such circumstances, see Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364. Complainant has done so in this case.
The Domain Name points to an inactive page. Consequently, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Further, Respondent has not come forward to demonstrate preparations to use the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). For the same reasons, Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Policy, paragraph 4(c)(iii).
There is nothing in the record to suggest that Respondent has ever been commonly known by the Domain Name. Complainant, moreover, has not granted Respondent authority or license to use Complainant’s name or trademark in a Domain Name. Policy, paragraph 4(c)(ii).
Respondent has not come forward with facts or argument to rebut Complainant’s prima facie case. The Panel accepts Complainant’s prima facie case as supported on and consistent with the record. Complainant has established the second element of its case.
C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith.
The evidence of record establishes that Complainant’s VOLKSWAGEN trademark is well-known in Australia and internationally with respect to the manufacture and sale of automobiles. Prior UDRP panels have so found. See, e.g., Volkswagen Aktiengesellschaft v. Muqadas Wattoo, supra. With a well-known and widely registered trademark such as VOLKSWAGEN, Respondent was likely to have been aware of the trademark and of Complainant’s rights in that trademark when it registered the Domain Name. It would not otherwise have chosen to register a domain name based so obviously on that mark. Respondent’s intentional use of that mark in its entirety in registering the Domain Name is evidence of bad faith registration. See Lego Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Playboy Enterprises International, Inc. v. Pitts, WIPO Case No. D2006-0675; Ford Motor Co. v. Knuhtsen, WIPO Case No. DBIZ2002-00183.
While the Domain Name resolves to an inactive webpage, such passive holding of the Domain Name may still constitute bad faith use depending upon the attendant circumstances. WIPO Overview 2.0, paragraph 3.2. See, Lego Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Redcats S.A. and La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel considers the following factors to be indicative of bad faith use of the Domain Name in this case:
Complainant’s trademark was and is well-known in connection with the manufacture and sale of automobiles based on long term use since 1937, Internet presence and high sales volume around the world, including Australia. Volkswagen AG v. Tim Jevon, WIPO Case No. D2014-2155; Volkswagen AG v. Aram Baghdasaryan, WIPO Case No. D2015-0057;
Complainant’s trademark is internationally and nationally registered, including in Australia;
Respondent did not reply to or take corrective action in response to Complainant’s cease-and-desist letter. Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483;
Respondent did not respond to the Complaint in this proceeding to show actual use or demonstrable preparations for use of the Domain Name in connection with a bona fide offering of goods or services. Volkswagen AG v. Aram Baghdasaryan, supra;
There is a credible suggestion on the record, unrefuted by Respondent, that Respondent registered the Domain Name with the intent of selling it;
“Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the [Domain Name] by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law”. Telstra Corporation Limited v. Nuclear Marshmallows, supra; Nintendo of America, Inc. v. Garrett N. Holland et al, supra.
The Panel considers the record evidence in this case to be sufficient to establish that Respondent both registered and is using the Domain Name in bad faith. Complainant, therefore, has established the third and final element of its case.
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.melbourne> be transferred to Complainant.
John R. Keys, Jr.
Date: September 29, 2015