WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Fawzi Sood
Case No. D2015-1483
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa of Warsaw, Poland.
The Respondent is Fawzi Sood, of Blaine, Minnesota, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <volkswagen.xyz> ("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 August 20, 2015. On August 20, 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 21, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 30, 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 VOLKSWAGEN trade mark registrations of the Complainant cover an extensive range of goods and services and are registered in the United States where the Complainant is based with first use in commerce recorded as 1950. VOLKSWAGEN is an internationally known trade mark.
The Domain Name, registered in 2014, points to a holding page indicating that a web site is coming soon.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
The Complainant was founded in 1937 and is the largest car maker in Europe with 12.9 percent of the world passenger car market. The trade mark VOLKSWAGEN has become exclusively associated with the Complainant and any products bearing the same or similar trade marks will appeal to the public as if such products had emanated from the Complainant. The VOLKSWAGEN trade mark registrations of the Complainant cover an extensive range of goods and services and are registered in the United States where the Complainant is based with first use in commerce recorded as 1950. VOLKSWAGEN is an internationally well-known trade mark.
The Complainant's main international web site at "www.volkswagen.com" contains information on international activities of the Complainant. The Complaint owns a large number of domain names containing its VOLKSWAGEN mark.
The Domain Name incorporates the Complainant's trade mark in its entirety. The addition of the gTLD ".xyz" does not diminish the confusing similarity between the Domain Name and the Complainant's trade marks. The Domain Name is confusingly similar to the Complainant's VOLKSWAGEN trade mark.
The Complainant has not licensed the Respondent to use any of its trade marks. The Respondent is in no way connected with the Complainant. The Respondent is not commonly known by the Domain Name.
The Respondent purposefully created a domain name consisting of the Complainant's famous mark and has registered it to create the misleading impression of being somehow associated with the Complainant when this is not the case. The Respondent is trying to exploit the fame of the Complainant's trade marks to attract to the Respondent's web site Internet users looking for information on the Complainant and divert them from legitimate web sites of the Complainant. The Respondent has no legitimate reason for registering the Complainant's trade mark as a domain name. Given the fame of the Complainant's marks the Respondent must have known of the Complainant's rights at point of registration of the Domain Name.
The Domain Name points to a holding page indicating that a web site is coming soon. The fact that a domain name is held passively does not prejudge a legitimate use of that domain, rather such passive holding is deemed a bad faith indicator.
The Complainant sent a cease and desist letter to the Respondent to which the Respondent did not respond.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant's mark VOLKSWAGEN and the gTLD ".xyz". "Xyz" is a new gTLD of general application and has no particular distinctive meaning of its own. Further generic meaning gTLDs are usually not taken into account for the purposes of determining confusing similarity under the Policy. As such the Domain Name is confusingly similar to the Complainant's registered mark VOLKSWAGEN for the purposes of the Policy. As such the Complainant has satisfied the first limb of the Policy with respect to the Domain Name.
B. Rights or Legitimate Interests
The Respondent does not appear to have any trade marks associated with the name "Volkswagen". There is no evidence that he is commonly known by this name and he does not have any consent from the Complainant to use this name. He does not appear to have used the Domain Name for any bona fide offering of services of his own.
Currently, there is a holding page attached to the Domain Name. The Respondent did not respond to this Complaint and does not explain why he has registered the Domain Name. Given the famous nature of the Complainant's mark it would indicate to most Internet users and members of the public that the Domain Name is linked to the Complainant. The Respondent does not deny any knowledge of the Complainant and its rights or provide any evidence of intended legitimate use. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Section 4 (b) of the Policy sets out various criteria which are evidence of registration and use of a domain name in bad faith under the Policy which are non-exclusive. However Panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a well-known trade mark in a domain name where there is no response and no explanation as to why the use could be good faith. See the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not responded to the Complaint and has not explained why he would be entitled to register a domain name consisting of the Complainant's widely known trade mark and a gTLD with no specific meaning. As such the Panel finds on the balance of probability that the Respondent registered and used the Domain Name 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.xyz> be transferred to the Complainant.
Date: October 1, 2015