WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. The Website Company, Minh Ha
Case No. D2015-1559
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki Tomaszek & Wspólnicy SP.K., Poland.
The Respondent is Minh Ha, The Website Company of Belgium.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.vlaanderen> is registered with Register NV dba Register.eu (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2015. On September 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 Complaint was submitted in the English language. The language of the registration agreement for the disputed domain name is Dutch. On September 7, 2015, the Center sent a language of proceedings communication in both Dutch and English to the parties. On September 8, 2015, the Complainant submitted a request for English to be language of proceedings. The Respondent did not submit any comments on this request.
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 in both Dutch and English, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2015.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 6, 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 Volkswagen was founded in 1937 and is one of the world’s largest car manufacturers. The Complainant owns numerous registrations consisting of or containing the VOLKSWAGEN trademark and covering a broad range of goods and services in all of the 45 trademark classes. As examples, the record shows the following registrations:
1) VOLKSWAGEN - International Registration No. 702679 registered on July 2, 1998, designating, inter alia, the Benelux countries;
2) VOLKSWAGEN - Community Trademark No. 703702 registered on May 10, 1999;
3) VOLKSWAGEN - Community Trademark No. 9383506 registered on February 25, 2011.
The Respondent, located in Flanders, Belgium, is in the business of website design and registered the disputed domain name on June 26, 2015. The disputed domain name is redirected to the website “www.thewebsitecompany.be”, on which the Respondent advertises its services.
The Complainant sent a cease and desist letter to the Respondent on July 27, 2015. Subsequently, the Respondent offered to transfer the disputed domain name to the Complainant for a fee of EUR 1,000.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The only difference between the disputed domain name and the Complainant’s VOLKSWAGEN trademark is that the disputed domain name ends with the “.vlaanderen” generic Top-Level Domain (“gTLD”). Such a modification however 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 the Complainant’s trademarks. Furthermore, the Respondent is in no way connected with the Complainant or any of its subsidiaries and thus has no legitimate reason for registering the Complainant’s trademark as a domain name.
The Respondent’s offer to sell the disputed domain name to the Complainant is to be considered a clear indication of bad faith. In addition, the Respondent has attempted to misleadingly divert consumers to its website, thereby exploiting the reputation of the Complainant and its trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
According to information by the Registrar, the language of the registration agreement is Dutch. The Complainant has however submitted a request for English to be language of proceedings, in order to save costs and considering that correspondence between the parties has been conducted in English. The Respondent did not submit any comments on this request.
The reasons mentioned by the Complainant are sufficient in the Panel’s view to deviate from the general rule under paragraph 11 of the Rules (that the language of the administrative proceedings shall be the language of the Registration Agreement) and issue this decision in English.
B. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s VOLKSWAGEN trademark in its entirety. This will often be sufficient in itself to establish confusing similarity between the disputed domain name and the complainant’s trademark (cf., e.g., Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857).
Furthermore, the addition of what is both a gTLD and a geographic descriptor does not negate confusing similarity between the Complainant’s trademark and the disputed domain name. The “vlaanderen” descriptor (meaning “Flanders” in Dutch) is not sufficient to distinguish the disputed domain name for the Complainant’s business and well-known trademark and in fact tends to reinforce the false idea of association with the Complainant (cf., Volkswagen AG v. Propaganda Media Pty. Ltd., WIPO Case No. D2015-1255 [<volkswagen.melbourne>]).
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
Based on the Complainant’s contentions, and the Panel’s findings here below, the Panel finds that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Respondent’s offer to transfer the disputed domain name to the Complainant for EUR 1,000 (an amount in excess of the Respondent’s out-of-pocket costs directly related to the domain name) clearly fulfills the requirements to demonstrate bad faith registration and use under paragraph 4(b)(i) of the Policy.
Moreover, by redirecting the disputed domain name to the Respondent’s website “www.thewebsitecompany.be”, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark. Such conduct is further evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
The Complainant has thus also satisfied paragraph 4(a)(iii) 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.vlaanderen> be transferred to the Complainant.
Date: November 20, 2015