WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Constantin Amann
Case No. D2015-2011
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Constantin Amann of Vienna, Austria, represented by Advokaturbuero Obernberger, Austria.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.rocks> is registered with united-domains AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 English. The language of the Registration Agreement is German. On November 16, 2015, the Complainant submitted a request for the language of proceedings to be English. On November 18, 2015, the Respondent requested German as the language of proceedings. The Center proceeded to administer the case in dual language.
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 November 19, 2015. In accordance with the Rules, paragraph 5 in both German and English, the due date for Response was December 9, 2015. The Respondent did not submit any formal Response. Accordingly, the Center notified that it would proceed with panel appointment on December 10, 2015.
The Center appointed Theda König Horowicz as the sole panelist in this matter on December 16, 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
Volkswagen was founded in 1937 and is one of the world's leading automobile manufacturers. Its activities generate very substantial sales revenue. The Volkswagen Group comprises twelve brands, including Volkswagen Passenger Cars and Volkswagen Commercial Vehicles.
The Complainant owns several trademark registrations worldwide for VOLKSWAGEN, including:
- International trademark registration No. 702679 of July 2, 1998, covering notably Austria;
- Community Trade Mark trademark registration No. 000703702 of May 10, 1999;
- Community Trade Mark trademark registration No. 009383506 of February 25, 2011.
The Complainant also owns domain names comprising the VOLKSWAGEN, trademark such as <volkswagen.com> and <volkswagen.co.at>. The official website "www.volkswagen.com" contains information on the international activities (products, new campaigns, etc.) of the group.
The disputed domain name <volkswagen.rocks> was registered by the Respondent on August 25, 2015.
On September 29, 2015, the Complainant sent a cease and desist letter to the Respondent asking for the transfer of the disputed domain name. No response was given to said letter.
On November 16, 2015, the Respondent wrote an email in English to the Complainant following the Center's notification relating to the language of the proceedings:
I'm contacting you concerning an email I received from the "WIPO" concerning the <Volkswagen.rocks> domain and language of proceeding.
(…). Could you please clarify what your claim is so that I can prepare the process on my side.
5. Parties' Contentions
The Complainant alleges to have rights in the famous trademark VOLKSWAGEN which is registered and applied for an extensive range of goods and services in all 45 trademark classes. The Respondent registered the disputed domain name which contains the Complainant's trademark in its entirety. The only difference between the disputed domain name and the Complainant's trademark is that the disputed domain name ends with ".rocks" which does however not diminish the confusing similarity between both elements at issue.
The Complainant also alleges not to have licensed or otherwise permitted the Respondent to use its trademarks or any other variations thereof, or to register the disputed domain name. The Respondent is not commonly known by the disputed domain name. Considering the notoriety of the Complainant's trademark, the Respondent obviously registered the disputed domain name in order to:
- create the wrong and misleading impression of being in some way associated to the Complainant;
- try to exploit the fame and reputation of the Complainant's trademarks;
- attract Internet users looking for information on the Complainant to the Respondent's website and divert them from legitimate websites of the Complainant.
In this context, the Complainant underlines that the Respondent had no legitimate reason for registering the Complainant's trademarks as a domain name.
The Complainant further states that the trademark VOLKSWAGEN is famous all over the world, fact which must have been known by the Respondent when he registered the disputed domain name. The Respondent deliberately registered and used the disputed domain name in order to exploit the reputation of the Complainant's trademark and mislead Internet users and divert the consumers to the website under the disputed domain name. The passive holding of the disputed domain name is an additional bad faith indicator.
The Respondent took position on the language of the proceedings but did not otherwise reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of Proceedings
The Registration Agreement is in German.
In accordance with paragraph 11(a) of the Rules, the default language of the proceedings would be German.
The Complainant requested for English to be the language of the proceedings considering that
(i) the registration agreement on the Registrar website is only available in English ;
(ii) the translation of the Complaint from English into German would result in additional, significant costs and will cause unnecessary delay in the proceedings;
(iii) English is most commonly used and known in the world and the level of English proficiency in Austria allows to assume that the Respondent likely communicates in English;
(iv) the Respondent did not respond to the Complainant's cease and desist letter in English; in particular he did not mention that he would not understand English;
(v) on November 16, 2015 the Respondent sent a communication to the Complainant which is formulated in fluent English.
The Respondent requested German to be the language of the proceedings as he is Austrian living in Austria. He indicates that he had all his education in the German language and that he exclusively communicates in German. Furthermore, the Respondent underlines that the Complainant is a German company. Furthermore, the use of English would unnecessarily delay the proceedings and incur costs. Finally, the registration agreement is in German.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to the circumstances. With regard to paragraphs 10(b) and (c) of the Rules, panels must ensure fairness to the parties and maintenance of a cost-efficient and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burden to the parties and undue delay to the proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Panel notes that both parties have been given a fair opportunity to present their case.
Indications have been given by the Complainant to show that the Respondent is competent in English.
In addition, the Panel observes that the webpage connected to the disputed domain name is currently in English.
Finally, the Panel notes that the Respondent uses the email address: […]@druber.at. A quick Internet search made on "www.druber.at" shows that said website is actually constructed and conceived in English and that the Respondent would be the founder and CEO of the Druber Company. It is a further indication that the Respondent is fluent in said language.
In the light of the above, there are no reasons for having the proceedings delayed and to request for the Complaint to be translated into German.
Under the circumstances, the Panel concludes that the language of proceedings shall be English.
2. Substantive Issues
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant showed to have trademark rights in the name "Volkswagen" which is undoubtedly a well-known trademark.
The trademark VOLKSWAGEN is reproduced in its entirety in the disputed domain name.
Under the circumstance, the Panel concludes that the disputed domain name is identical to the Complainants' mark.
The condition required under paragraph 4(a)(i) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
Under the Policy, the Complainant must make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name is currently linked to a webpage having the following content:
it Rocks !!!
This site is not an official website of Volkswagen AG. This site is to be used by fans of the Volkswagen brand and will only give those a platform to communicate their interest. Therefore this site will not be used to monetized on the brand name. We are Volkswagen fans … we rock, you rock, everybody rocks. Site coming soon!"
Many UDRP panels have decided that the registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's mark.
In the present case, the Panel notes first that the potential fan site is not yet active, although it has been registered since August 2015. The webpage actually announces that a fan site will be created at this specific address "www.volkswagen.rocks".
Secondly, the disputed domain name contains in its entirety the Complainant's trademark and uses it in the disputed domain name with no additional word or mention of any kind relating for example to the future content of the site.
Moreover, the Panel notes that at the time of filing the Complaint, the disputed domain name resolved to the Registrar's parking page, therefore with no active content. Only after the Complaint was filed, some text was included on the website. The Panel finds that, according to paragraph 4(c)(i) of the Policy, the Respondent has not demonstrated any preparation to use the disputed domain name in connection with a bona fide offering of goods or services before any notice to him of this dispute.
More specifically, there is nothing in the case file to indicate that the site is or will be devoted to a noncommercial fan platform of the Complainant's brand. Conversely, the Complainant is known for largely advertising its cars and other products in all media and it might be having an interest in creating a campaign under "volkswagen.rocks".
The Respondent thus creates confusion for Internet users who may think at first sight that there is a connection between the Complainant and the Respondent.
Furthermore, the Respondent prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet and diverts Internet users to its own site, thereby potentially depriving the Complainant of visits by Internet users (David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicolla, WIPO Case No. D2000-1459).
Thirdly, the Complainant reacted quickly when discovering the registration of the disputed domain name and sent out a warning letter which remained unanswered. The Complainant did not leave any room of manoeuver to the Respondent who was informed from the beginning that his initiative and project was not approved by the trademark owner.
Fourthly, the Complainant has sufficiently developed arguments and made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Finally, the Respondent did not object to the said arguments brought forward by the Complainant.
In view of the foregoing, the Panel finds that the second element of paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
It is public knowledge and the record shows that the Complainant is active and well-known under the trademark VOLKSWAGEN.
The disputed domain name is identical to the Complainant's trademark as it contains in its entirety the well-known "VOLKSWAGEN" trademark.
Furthermore, as noted under section 6.2.B above, the webpage connected to the disputed domain name announced that the future website will be used as a platform for VOLKSWAGEN fans only after correspondence from the Complainant to the Respondent.
The Respondent was thus obviously aware of the trademark VOLKSWAGEN prior to registering the disputed domain name and the condition of bad faith registration is therefore fulfilled.
In relation to the bad faith use, it has to be considered that the list of cases where bad faith registration can be found enumerated in paragraph 4(b) of the Policy is not exhaustive.
The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith which includes (i) the Complainant having a well-known trademark and (ii) no response to the complaint was filed (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0.") paragraph 3.2.).
In this case, the Respondent is neither a competitor of the Complainant nor is he apparently acting for commercial gain as the webpage linked to the disputed domain name indicates that "(..) this site will not be used to monetized on the brand name".
A quick search on the Internet relating to the Respondent actually reveals that he would be active in a branding agency which promotes its services on the website "www.druber.at".
The Panel considers, after review of the circumstances of this case, that the Respondent most likely wanted to profit directly or indirectly from the reputation of the VOLKSWAGEN trademark for his own business.
Furthermore, the Respondent has not taken any steps within these proceedings in order to explain his motivations for registering the disputed domain name and for providing more information on his alleged fan site project.
For all these reasons, the Panel weighs that the Complainant's rights in its particularly well-known trademark are predominant and that the high notoriety of its trademark renders it very likely that the Respondent intended to profit in a way or another from the reputation of VOLKSWAGEN in order to divert the consumers to the disputed domain name and future website.
The Panel thus concludes that the third condition of paragraph 4(a) the Policy is established.
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.rocks> be transferred to the Complainant.
Date: January 6, 2016