WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Steve William
Case No. D2015-1317
1. The Parties
Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa of Poland.
Respondent is Steve William of Orlando, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.sale> (the “Domain Name”) 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 July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 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 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2015. Respondent did not submit a formal Response but sent three communications to the Center by email regarding the selling of the Domain Name on August 22, 2015 and August 24, 2015.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on October 8, 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
According to the Registrar the Domain Name was registered on May 6, 2015.
5. Parties’ Contentions
Complainant states that it was established in Germany in 1937 and contends that it is one of the world’s leading automobile manufacturers and largest carmaker in Europe. In 2014 it delivered 10.137 million vehicles to customers; a 12.9% share of the world passenger car market. In Western Europe, almost one in four new cars is made by the Volkswagen Group, and its sales revenue in 2014 totaled EUR 202 billion.
Complainant asserts that by virtue of its registration, and long and extensive worldwide use of its VOLKSWAGEN trademark (the “VOLKSWAGEN Trademark”) which has become exclusively associated with Complainant and any products bearing the same or similar trademark will appeal to the public as such products having emanated from Complainant.
Complainant is also the registrant of a large number of domain names containing the VOLKSWAGEN Trademark, both under generic Top Level Domains (gTLDs) and country-code Top Level Domains (ccTLDs), and in particular its main international website at “www.volkswagen.com” as well as “www.volkswagen.org” and “www.vw.com”. Its “www.volkswagen.com” website contains information on the international Volkswagen activities, including all products, new campaigns, offers and links to other websites.
Complainant also asserts that it is the owner of numerous trademark registrations and applications consisting of or containing the VOLKSWAGEN Trademark.
Complainant notes that the Domain Name is currently not an active website. It further contends that the Domain Name has been registered and used in bad faith as it incorporates Complainant’s famous VOLKSWAGEN Trademark in its entirety. The only difference between the Domain Name and the VOLKSWAGEN Trademark is that the Domain Name ends with “.sale”, a gTLD, which has a descriptive character in relation to the Volkswagen word and thereby emphasizes its trademark function thus creating a confusing similarity between the Domain Name and Complainant’s VOLKSWAGEN Trademark.
Complainant states that it has not licensed or otherwise permitted 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, and further, that Respondent is in no way connected with Complainant, nor with its subsidiaries.
It is asserted that in correspondence between the parties aimed at settlement of the present dispute Respondent declared his fondness for Volkswagen cars and stated that he had registered the Domain Name because he wants to repair and sell used Volkswagen cars. Complainant contends that this statement is not supported by any evidence and that from Complainant‘s research on the Internet, Complainant could find no information linking Respondent to Volkswagen cars. However, Complainant notes that the research did show that Respondent is also a registrant of several other domain names, including inter alia <atlantasuperfalcons.com>. On the website “www.atlantasuperfalcons.com” Respondent describes a shoe brand which he has created and states “My name is Steve, I’ve always had a passion about Atlanta, shoes and falcons. The reason why I’ve created this unique brand was because of all the three things I’ve loved the most”. Respondent introduces himself as a passionate shoe designer, who is “currently designing the shoes getting fans feedback”. Complainant submits that this statement throws doubt on his assertions about engaging his college savings to develop his dreamed family business focused on repairing and selling Volkswagen cars.
Atlanta Falcons is a well-known US football team, and besides its main activity, the Atlanta Falcons Football Club also produces and sells clothes and shoes dedicated to its team supporters. Complainant submits that it is not a coincidence that Respondent has registered the above domain name and asserts that this registration purposefully misleads Internet users and confirms the fact that Respondent has engaged in a pattern of conduct preventing rightful owners of the trademarks from reflecting these trademarks in the corresponding domain names.
Complainant states that it sent a cease and desist letter to Respondent on June 16, 2015. Respondent replied the same day by email, in which he requested settlement talks, stating that he is selling used Volkswagen cars. In its reply Complainant explained that Volkswagen’s only intention is to protect its exclusive, registered rights and offered Respondent an amicable solution of the matter, being compensation of Respondent’s out of pocket and documented costs which were eventually incurred for the registration in question. In this regard Complainant asked for a document confirming the registration cost of the Domain Name.
In an email dated June 25, 2015 Respondent declared his admiration for Volkswagen cars, described his alleged family business focused on fixing and selling Volkswagen Jetta and Volkswagen Passat cars and stated inter alia that “When the gtlds became available to the public I actually bided for the domain. I used my college savings just to find a way to purchase it. (…) I wish to start a negotiated price of 24,459,837.77”. Although Respondent has not provided the currency of the requested price, having in mind Respondent place of residence, it is believed that he is referring to USD.
In its efforts to resolve the matter amicably Complainant in an email dated July 3, 2015 explained to Respondent that its offer concerns refund of the cost actually incurred for the registration. Complainant expressed also its concern that the registration of a domain name consisting solely of its Volkswagen trademark creates a likelihood of confusion to the public.
In his reply Respondent refused Complainant’s offer of compensation for <volkswagen.sale> registration and refused to present any document confirming such cost, by stating “I do appreciate your email but unfortunately I cannot sell you something that I paid the exact amount for that's valued for my family business. (…)I am not selling the domain for what I purchased it for nor do I need to provide you documents of what I purchased it for”.
In its email dated July 17, 2015, Complainant in its last attempt to solve the matter amicably reiterated its offer of compensation and once again explained the reasons why it is very important for Complainant to keep the domain names consisting solelyof the VOLKSWAGEN Trademark from the third parties’ registrations. In its reply Respondent repeated his statements regarding spending his college savings, his alleged family business and compared Complainant’s offer to robbery.
Complainant submits that Respondent must have been aware that the VOLKSWAGEN Trademark is famous all over the world when he registered the Domain Name and contends that Respondent’s purpose was to misleadingly divert consumers to the website under the Domain Name, by causing confusion in the way of creating the impression of relation with or sponsorship or endorsement of Respondent by Complainant. It is apparent that the intent of Respondent was to exploit the reputation of Complainant and its trademarks.
Complainant asserts that Respondent’s registration of the Domain Name and passive holding constitutes opportunistic bad faith registration and use of the Domain Name.
No formal Response was received by Respondent.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is clear that Complainant has for many years used and sought protection for Complainant’s Trademark in connection with automobile manufacturing, sales and servicing. Complainant asserts, without dispute from Respondent, that Complainant’s Trademark is used and registered in a number of countries around the world and that Complainant enjoys a worldwide reputation.
Complainant notes that the Domain Name incorporates Complainant’s famous VOLKSWAGEN Trademark in its entirety and that the only difference between the Domain Name and Complainant’s Trademark is that the Domain Name ends with the gTLD “.sale”. Complainant also contends that the word “sale” has a descriptive character in relation to the Volkswagen word and thereby emphasizes its trademark function thus creating a confusing similarity between the Domain Name and Complainant’s Trademark. There is clear merit in this contention.
The Domain Name is confusingly similar to Complainant’s Trademark. The addition of the gTLD “.sale” does little to remove this confusing similarity (no more than a dictionary word, frequently used in connection with the sale of motor vehicles) and indeed has no material influence on the assessment of the confusing similarity between the Domain Name and Complainant’s Trademark.
The Panel finds:
a) Complainant has clearly established rights in respect of the Complainant’s Trademark.
b) The Domain Name is confusingly similar to Complainant’s Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
It is common ground that the Domain Name does not resolve to an active website. It is however apparent from the email communications between the parties that Respondent takes the position that he has an interest in and indeed admires Volkswagen cars and alleges that when the Domain Name became available, he used his college savings to purchase the Domain Name. However, it appears that Respondent has sought to sell the Domain Name to Complainant for an amount well in excess of the registration cost.
While Respondent has failed to avail himself of the opportunity to file a formal response and explain his position, the Panel is able to glean from the correspondence the broad thrust and purpose of the discussions between the parties. At the heart of Respondent’s position is that he has a genuine interest in Volkswagen cars, hence his decision to register the Domain Name. That might support an assertion that Respondent has a legitimate interest in the Domain Name. However, the offer to sell the Domain Name and to start at a negotiated price of 24,459,837.77 (currency unknown) is hardly consistent with this and allows the Panel to infer that Respondent’s explanation is implausible.
The Panel also notes Complainant’s assertion that Respondent has made similar claims in relation to the <atlantasuperfalcons.com> domain name and alleged that he has “always had a passion about Atlanta, shoes and falcons” which is why he “created this unique brand”. Complainant submits, with some justification, that this statement throws doubt on Respondent’s assertions about engaging his college savings to develop his dreamed family business focused on repairing and selling Volkswagen cars.
As noted above, Respondent has failed to file a formal response and properly explain his position. Accordingly, the Panel accepts Complainant’s arguments, in the light of the record and submissions as a whole. The Panel finds that Respondent has failed to demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. As a result, there is no evidence to show that Respondent has any intention of legitimate noncommercial or fair use of the Domain Name.
In the circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible. On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Respondent has failed to establish that he has any license or permission to use Complainant’s Trademark. On that basis it is reasonable to infer that Respondent registered the Domain Name with a view to making some pecuniary advantage, in all likelihood by selling the Domain Name to Complainant for a potentially significant profit.
In the absence of a plausible explanation from Respondent as to how and why his registration and use of Complainant’s Trademark is appropriate or necessary for the operation of his business or personal affairs the Panel finds that he registered and used the Domain Name in bad faith. That is, so as to take advantage of the worldwide reputation and goodwill of Complainant and Complainant’s Trademark and to somehow turn a profit from the Domain Name, in all likelihood by selling the Domain Name back to Complainant.
The Panel thus concludes that the third element of the Policy has been met.
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.sale> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: October 22, 2015