WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Darcy Jovic
Case No. D2015-1878
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Darcy Jovic of West Vancouver, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.one> is registered with Marcaria.com International, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2015. On October 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 proceeding commenced on October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. On November 19, 2015, the Respondent requested an extension of the Response due date. In accordance with Rules, paragraph 5(b), the Response due date was extended to November 23, 2015. The Response was filed with the Center on November 24, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on December 11, 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. On December 28, 2015, due to exceptional circumstances, the Panel extended the due date for rendering its decision until December 30, 2015.
4. Factual Background
The Complainant, Volkswagen, was established 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;
2) VOLKSWAGEN - Canadian Trademark No. TMA 553867 registered on November 15, 2001;
3) VOLKSWAGEN - Canadian Trademark No. TMA 295615 registered on September 28, 1984;
4) VOLKSWAGEN - Canadian Trademark No. UCA 44682 registered on January 17, 1953.
The Respondent is located in West Vancouver, Canada and registered the disputed domain name on July 20, 2015.
The disputed domain name does not resolve to an active website.
The Complainant sent a cease and desist letter to the Respondent on August 24, 2015, to which the Respondent has not replied.
5. Parties' Contentions
The Complainant is the largest car maker in Europe with 12.9 percent of the world passenger car market.
The trademark VOLKSWAGEN has become exclusively associated with the Complainant and any products bearing the same or similar trademarks will appeal to the public as if such products had emanated from the Complainant.
The VOLKSWAGEN trademark registrations of the Complainant cover an extensive range of goods and services and are registered in Canada. VOLKSWAGEN is an internationally well-known trademark.
The Complainant's main international website at "www.volkswagen.com" contains information on international activities of the Complainant. The Complainant owns a large number of domain names containing its VOLKSWAGEN mark.
The disputed domain name incorporates the Complainant's trademark in its entirety. The addition of the generic Top-Level Domain (gTLD) ".one" does not diminish the confusing similarity between the disputed domain name and the Complainant's trademarks. The disputed domain name is confusingly similar to the Complainant's VOLKSWAGEN trademark.
The Complainant has not licensed the Respondent to use any of its trademarks. The Respondent is in no way connected with the Complainant. The Respondent is not commonly known by the disputed 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 trademarks to attract to the Respondent's website Internet users looking for information on the Complainant and divert them from legitimate websites of the Complainant. The Respondent has no legitimate reason for registering the Complainant's trademark 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 disputed domain name.
The disputed domain name is currently not active but the fact that a domain name is held passively does not prejudge a legitimate use of that domain name, rather such passive holding is deemed a bad faith indicator.
The Complainant sent a cease and desist letter to the Respondent which remained unanswered.
The Respondent is a Canadian individual working in the IT sector in the last decade.
The Respondent claims that the disputed domain name is inactive and that a "blank" URL cannot infringe a trademark. The Respondent registered the disputed domain name after the "long premium service offered only to Trademark holders finally expired" (citing the DPML blocking system).
The disputed domain name has not been used to lay the "test" set forth by the Policy, and the Respondent underlines that the Complainant's trademark is not registered for every product and service which means that the Respondent could make future use of the disputed domain name without infringing the Complainant's rights. Therefore the Complaint applied is "premature".
The Respondent also notices that the Complainant secured its trademark in some new gTLDs but chose not to file application for many ("thousand") others like <volkswagen.blvd> or the disputed domain name.
6. Discussion and Findings
A. 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 under the Policy.
Furthermore, the addition of ".one", which is a new gTLD of general application and has no particular distinctive meaning of its own, is usually not taken into account for the purposes of determining confusing similarity under the Policy.
Despite the claims made by the Respondent, the mere addition of the "one" gTLD to the trademark is not sufficient to distinguish the disputed domain name and a widely 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>).
At last, the fact that the Complainant did not register "VOLKSWAGEN ONE" as a trademark as observed by the Respondent does not affect the Panel's finding.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
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 disputed 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 disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
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 of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.)
Here, the Complainant has established trademark rights and denied any relationship with the Respondent.
In his response, the Respondent did not establish any right or legitimate interest with respect to the disputed domain name. Since the disputed domain name has not been used before the Complaint was filed, the Respondent could have however demonstrated a prior right or at least a legitimate interest in the disputed domain name, for instance any preparation to use it in connection with a bona fide offering of goods, or even a noncommercial or fair use.
However, in his Response, the Respondent does not demonstrate any right or legitimate interest in the disputed domain name, merely arguing that he had a "project" with his domain names, and claiming that the Complaint had been filed prematurely.
The fact that the Complainant did not use any prior RPM ("Right Protection Mechanism") to register the disputed domain name does not grant any right to the Respondent to apply for such registration.
The Respondent failing to rebut the Complainant's prima facie case, the Panel concludes that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out various non-exclusive criteria, which are evidence of registration and use of a domain name in bad faith under the Policy.
Previous UDRP panels have found that there can be a finding of registration and use in bad faith where there is passive use of a well-known trademark in a domain name. See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent has replied to the Complaint but he has not explained to the satisfaction of this Panel why he would be entitled to register a domain name consisting of the Complainant's widely known trademark and a gTLD with no specific meaning. In the circumstances, the Panel cannot see any use of the disputed domain name which would be legitimate.
Accordingly, the Panel finds that the Respondent registered and is using the disputed 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.one>, be cancelled.
Date: January 4, 2016