WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Jus Tin Pty Ltd.
Case No. D2015-1467
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Jus Tin Pty Ltd. of Indooroopilly, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.space> (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 August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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”), all of which apply to dispute resolution procedures for domain names registered in the “.space” generic top-level domain.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 25, 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 Complainant, a company established and headquartered in Germany since 1937, is one of the largest automobile manufacturers in the world, with 2013 sales revenues exceeding EUR 202 billion. The Complainant holds numerous registered trademarks consisting of, or incorporating, the VOLKSWAGEN mark, including the following:
Numerous, including Australia
July 2, 1998
July 20, 1998
February 25, 2011
The Complainant operates, among others, a global website at <volkswagen.com> and an Australian website at <volkswagen.com.au>.
According to the Registrar, the Respondent registered or acquired the Domain Name on May 1, 2015. The Domain Name does not currently resolve to an active website, but the Complaint attaches screen shots of the website to which the Domain Name formerly resolved, a landing site featuring what appear to be pay-per-click (“PPC”) advertising links for an array of companies. The website included the following disclaimer:
“The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
The Respondent failed to respond to a cease-and-desist letter from the Complainant’s counsel, and this proceeding followed.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to the VOLKSWAGEN mark, to which it simply adds a generic word, “space”.
The Complainant states that it has not given the Respondent permission to use the mark in a domain name and contends that there is no indication that the Respondent is known by a corresponding name or otherwise has a legitimate interest in it.
The Complainant infers that the Domain Name was registered and used in bad faith to exploit the Complainant’s famous mark for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for VOLKSWAGEN. The material portion of the Domain Name repeats that mark in its entirety. The generic top-level domain “.space” is not distinctive, as it is not limited to a particular business sector or activity.
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has established trademark rights and denied any relationship with the Respondent. The website formerly associated with the Domain Name does not reflect any legitimate commercial or noncommercial interest in a corresponding name, and the Respondent has not come forward to assert such an interest.
The Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As the website formerly associated with the Domain Name displayed “sponsored links”, the Domain Name was clearly used for commercial gain. Whether the Respondent shared in that gain is immaterial, as the Respondent is ultimately responsible for how the Domain Name is used.
The Complainant’s mark is distinctive and well-known globally, including Australia, where the Respondent is located. There is no likely explanation for the choice of this specific Domain Name other than it being a deliberate reference to the Complainant’s mark. There is no indication on this record that the Respondent had any plans for a conceivably legitimate use of the Domain Name -- as a reseller, for example, or for a fan site or complaint site concerning VOLKSWAGEN products. Further, the Respondent did not bother to reply to the Complainant’s cease-and-desist letter or to the Complaint in this proceeding, suggesting a disregard for the trademark rights of others.
The Panel concludes that the Complainant has established the probability that the Domain Name was registered and used in bad faith.
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.space> be cancelled, as requested by the Complainant.
W. Scott Blackmer
Date: October 14, 2015