WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Thijs van der Tuin
Case No. d2015-2106
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Thijs van der Tuin of Utrecht, the Netherlands, self-represented.
2. The Domain Names and Registrar
The disputed domain names <volkswagen-formula1.com>, <volkswagenformula1.com>,<volkswagen-f1.com> and <volkswagenf1.com> (the “Domain Names”) are registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2015. On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2015 and November 24, 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 November 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2015. The Response was filed with the Center on December 14, 2015.
The Complainant filed a Supplemental Filing with the Center on December 17, 2015. The Respondent filed a response to the Supplemental Filing on December 22, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on December 18, 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.
The Complainant’s stated reason for filing its supplemental statement is to respond to the allegations made by the Respondent in the Response which it could not have been aware of at the time of the filing of the Complaint. The Complaint states that this was because after the receipt of the Complaint, the Respondent significantly changed the content of the websites connected to the Domain Names (the “Websites”) and the arguments made in the Response relate mainly to the new content. The Respondent filed his objection to the Complainant’s Supplemental Filing on December 22, 2015 insofar that it contained information that should have been filed in the Complaint. The Respondent also filed additional evidence to respond to the Complainant’s Supplemental Filing.
Paragraph 15(a) of the Rules instructs this Panel to “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”. The purpose of the UDRP is to provide for a quick and inexpensive way to resolve domain name disputes. Each party has one opportunity to put forward its entire case. Under the Policy and the Rules, parties have no right to submit unsolicited additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion. The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Panel notes that the Respondent changed the content of the Websites after the filing of the Complaint. The Panel will therefore accept the Complainant’s Supplemental Filing insofar as it relates to the Respondent’s submissions and evidence in connection with the new content on the Websites which the Complainant could not have anticipated. The Panel will disregard all other submissions that should or could have been made in the primary submissions. The Respondent in his application to file additional evidence did not provide any reason why he had been unable to provide that information in the Response. The Panel considers that he should have anticipated the Complainant’s arguments in relation to his change of content of the Websites in the Response. There are no exceptional circumstances which warrant the Panel to consider the further materials. The Panel will therefore not consider the Respondent’s supplemental filing. However, the Panel notes that even if considered, it would not alter the Panel’s Decision.
4. Factual Background
The Complainant is part of the Volkswagen Group (the “Group”). It was founded in 1937 and is one of the world’s leading automobile manufacturers and the largest car maker in Europe. As at 2014, the Group has a 12.9 percent share of the world passenger car market. The Group sales revenue in 2014 totaled EUR 202 billion while profit after tax amounted to EUR 11.1 billion.
The Group comprises 12 brands – Volkswagen Passenger Cars, Audi, SEAT, SKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and MAN.
The Complainant uses the VOLKSWAGEN brand in connection with its cars. Through extensive use over the years it has become a well-known brand. The VOLKSWAGEN trade mark is registered globally across an extensive range of goods and services in all 45 trade mark classes. The earliest registration submitted in evidence dates back to 1998. The Complainant also owns a large number of domain names containing the VOLKSWAGEN mark both under generic and county code Top-Level Domain. Its official website is at “www.volkswagen.com”.
The Respondent registered all four Domain Names on October 24, 2014. On November 19, 2015, prior to the filing of the Complaint, each of the Websites displayed on the home pages a picture of a Red Bull Formula 1 racing car, the words “Formula 1 News – March 16-March 18, Melbourne, Australia” which takes up one third of the page and a scoreboard of the Formula 1 drivers on the rest of the page.
On or after the filing of the Complaint, the Websites’ content was changed to their current form which has displayed on the top of the home page “Red Bull and Audi/VW Formula 1 News” and a photograph of what looks like the Red Bull technology factory. On the top left hand corner of the page, there are four tabs – “Red Bull Racing Wiki”, “Audi Wiki”, F1 Wiki” and “2015 F1 Season” which are all hyperlinks to the Wikipedia pages of the subject described. Directly underneath the photograph is a disclaimer which says:
“This site gathers all news about Red Bull and Audi/VW. There is no relationship in any way between this site and the great people at Red Bull or Audi/VW. All trademarks are owned by their respective owners. This site is purely intended to inform about what is happening in the world of Red Bull and Audi/VW in relation to F1. This site hasn’t got any business or commercial relationship with Red Bull or Audi/VW. Red Bull or Audi/VW don’t endorse or sponsor this website.”
The rest of the site has links and the introductory paragraphs to articles relating to Formula 1 news. The links include the following news websites – “www.reuters.com”, “www.motorsport.com”, “www.autosport.com” and “www.grandprix.com”.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met and the Domain Names should be cancelled.
Identical or Confusingly Similar
The Domain Names each contain the Complainant’s VOLKSWAGEN trade mark in its entirety as well as the trade marks “f1” and “formula 1” which are trade marks belonging to a third party, Formula One Licensing BV. The addition of “f1” or “formula 1” to the well-known VOLKSWAGEN trade mark which comprise the first 10 letters of the Domain Names do not substantially diminish the initial confusingly similarity with the Complainant’s VOLKSWAGEN trade mark. The Domain Name is therefore confusingly similar to a trade mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks or apply for any domain name incorporating the trade mark. The Respondent is in no way connected with the Complainant nor with its subsidiaries. The Respondent is not commonly known by the Domain Names. The Respondent has no legitimate reason for registering the Complainant’s well-known trade marks. The Complainant is not involved with Formula 1 races and the content of the Websites do not relate to the Complainant’s products and services or company activities.
The Websites as they were at the time of the Complaint do not serve the freedom of speech, as the Complainant’s fan page or any kind of commentary websites. The Respondent’s adoption of the Domain Names inevitably and misleadingly diverts consumers to the effect of tarnishing the Complainant’s
well-known trade mark.
The Websites post-Complaint do not demonstrate any rights or legitimate interests on the part of the Respondent. The linked articles on the Websites do not concern the Complainant or any kind of press release regarding the Complainant’s alleged plans to join Formula 1. The Complainant is not connected to the Red Bull Formula 1 team, nor with any alleged attempts of Audi to join Formula 1 races. There are links to various Wikipedia entries but none to the Complainant’s information found there. The content on the current Websites do not qualify as fan sites as they promote third party websites and therefore products and services advertised or offered for sale on these websites. The links on the Websites lead to online shopping sites and also third party advertisements. This cannot be considered noncommercial use. The Respondent has not produced any of the information on the Websites himself other than the disclaimer. The Respondent has not published any of his own information, opinions or material connected with the Complainant in the way that owners of fan sites do.
The Domain Names do not include any terms which indicate to Internet users the claimed purpose of the Websites, i.e. fan sites. Instead they would be perceived by Internet users to be the Complainant’s official websites in co-operation with Formula 1.
Registration and Use in Bad Faith
The VOLKSWAGEN trade mark is famous all over the world. The Respondent must have been aware of this fact when he registered the Domain Names. The Domain Names were designed to attract Internet users who are looking for the Complainant’s products to cause confusion and disrupt the Complainant’s business by diverting consumers away from the Complainant’s websites. The Respondent is the registrant of at least 26 other domain names containing famous third party trade marks like “Audi”, “Red Bull”, “BBC” and “Formula 1”.
The registration of the Domain Names after press coverage of the possibility of Volkswagen or Audi joining Formula 1 races, points to a planned strategy of blocking the Domain Names which may have a value in the future.
The disclaimer on the Websites was inserted after these UDRP proceedings began. For just under a year from the registration date, no such disclaimer was on the Websites. The disclaimers are not visible in Google search results as claimed by the Respondent. In any event the existence of the claimer cannot cure bad faith when bad faith has been established by other factors.
The Respondent denies that the Domain Names should be cancelled for the following reasons:
Identical or Confusingly Similar
The Domain Names are not identical to the trade mark rights of the Complainant. Each Domain Name contains two elements: the trade mark VOLKSWAGEN and “formula 1” or “f1”.
Rights or Legitimate Interests
The Respondent runs the Websites as fan sites – providing news and information about Volkswagen, Audi and Red Bull in relation to Formula 1. The Websites contain links to third party websites that publish information and/or news about this subject. The Respondent does not generate any income via the Websites. He has no commercial intentions. He runs the Websites as a hobby.
Although the Complainant is not involved in Formula 1 races, news websites have reported that the Complainant or its subsidiary Audi is planning to enter Formula 1 racing. Notwithstanding the content on the Websites as at the time of the filing of the Complaint, the Respondent had always intended to develop fan sites that provide news and information which he has now done.
Even before the change of the content of the Websites, they were active. The Respondent provided information about Formula 1 drivers but as the Complainant did not have any drivers, he did not mention the Complainant on the Websites.
The Respondent’s assumption that the Complainant would enter the Formula 1 racing is the basis for which he has legitimate interest in the Domain Names.
In any event the Respondent has a disclaimer on the Websites. As such he is not misleadingly diverting consumers. The Websites are also very distinct from any official website of the Complainant.
The fact that the Domain Names are not identical indicates that the Websites are fan sites. The registration and use of the Domain Names have not prevented the Complainant from exercising its rights in its trade mark and managing its presence on the Internet. The Complainant has had no problem doing this as it owns 247 domain names which contain the VOLKSWAGEN trade mark.
Registration and Use in Bad Faith
The Respondent registered the Domain Names to provide fan sites that gather information on Audi, Volkswagen and Red Bull in relation to Formula 1. He has intentions to further develop the fan sites. He has no intention whatsoever to sell, rent or otherwise transfer the Domain Names to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out–of-pocket costs directly in relation to the Domain Name.
The Respondent did not register the Domain Names to prevent the Complainant from reflecting the trade mark in a corresponding domain name. Although the Respondent registered several Domain Names that contain “volkswagen” and “formula 1” or “f1”, “Audi” and “Red Bull”, he has not engaged in a pattern of such conduct.
The Respondent has never been involved in previous UDRP proceedings as these Domain Names are all fan sites.
The Complainant and the Respondent are not competitors and the Respondent did not register the Domain Names to disrupt the Complainant’s business. The Complainant has not provided any evidence that its business is disrupted. It has pointed out that its official website under <volkswagen.com> contains information on the activities of the company, its products and news campaigns. It therefore follows that any information in the future about Volkswagen and Audi entering Formula 1 racing would be published on the official website and therefore the Domain Names do not disrupt the business of the Complainant in any way.
There was no intention on the part of the Respondent to attempt to attract for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. This is because the Domain Names are used for his fan sites. Further there could be no likelihood of confusion because of the clear and prominent disclaimer at the top of each website. This disclaimer is also shown in the results of a Google search.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
The Domain Names are is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the Domain Names; and
The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Domain Names contain the Complainant’s distinctive trademark VOLKSWAGEN in its entirety and also incorporate the trademarks F1 and FORMULA 1 which the Panel understands belong to a third party, namely Formula One Licensing BV. UDRP panels have consistently found that a respondent’s inclusion of a third party’s trademark in its domain name does not eliminate the visual impression that a disputed domain name is associated with a complainant’s trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793. Likewise, the insertion of the hyphens between the words does not alter the fact that the Domain Names are confusingly similar to the Complainant’s trade mark. Also, the inclusion of the generic Top-Level Domain denomination “.com” shall be disregarded for the purpose of these proceedings.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s registered trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating, in particular but without limitation, 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) 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent’s arguments are based on paragraph 4(c)(iii) on the basis that the Domain Names are being used as fan sites. The WIPO Overview 2.0, paragraph 2.5 provides for two views in relation to the treatment of fan sites by panelists. The first view is that the registrant of an active and noncommercial fan site may have rights and legitimate interests in a domain name that includes the complainant’s trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature. Panels have found that a claimed fan site which includes pay-per-click links or automated advertising would not normally be regarded as a legitimate noncommercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).
The second view is that a respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet.
The Complainant has made the requisite prima facie case. The burden of coming forward with evidence of rights or a legitimate interest thus shifts to Respondent.
The Respondent admits that he changed the content of the Websites. The Panel notes that this change occurred after the filing of the Complaint. In determining the matter, the Panel has to consider the evidence as at the date the Complaint was filed.
The content of the Websites as provided by the Complainant displayed on the home page a picture of a Red Bull Formula 1 racing car, the words “Formula 1 News” – March 16-March 18, Melbourne, Australia” and a scoreboard of the Formula 1 drivers. The Respondent submissions in relation to these pages are that he intended to develop fan sites that provide news and information. Further these were active websites and therefore fall within paragraph 4(c)(iii) of the Policy. It would appear that his submissions are that these are not fan sites but would in future be fan sites. In any event even if the argument is that these are fan sites, the Panel is not convinced as there is nothing on the Websites that the Panel would say are typical of fan sites as, notably, the Websites lack any apparent connection to the Complainant or its trade marks used in the Domain Names. Further, the Respondent has not provided any evidence as to why they would be considered fan sites. The change of the Websites after the filing of the Complaint does not advance his case that he has rights or legitimate interests on the basis that the Domain Names are being used as fan sites. He had almost a year to set up the Websites to be fan sites but did not do so. These actions give the appearance of a respondent coming up with a convenient defence to a UDRP complaint.
In any event, even if the current Websites were in this form prior to the filing of the Complaint, the Panel is of the view that they are not fan sites. As the Complainant has submitted, there is no information about the Complainant on the Websites. There are links to Audi, Red Bull and F1 information but none about the Complainant. The links on the Websites lead to online shopping sites and also third party advertisements. This cannot be said to be noncommercial use.
Considering all the arguments made and evidence submitted on both sides, the Respondent has failed to rebut the Complainant’s prima facie case with its argument that the Websites are legitimate fan sites and the Panel therefore rejects the Respondent’s submissions that he has been making bona fide use of the Domain Names in connection with legitimate fan sites.
For reasons given there, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Names.
D. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
Registering and using the trade marks of third parties without their authorization in anticipation of future joint business interests between the trade mark owners is a strong indication to the Panel that the registration of the Domain Names were in bad faith. The explanations provided by the Respondent do not stand up. The alleged purpose for registering the Domain Names was to set up fan sites that gather information on Audi, Volkswagen and Red Bull in relation to Formula 1. This was done after press reports of a possible entry into the Formula 1 world by Volkswagen and Audi. For almost a year prior to the filing of the Complaint, the Websites did not give the appearance of fan sites. He also registered up to 26 other domain names which combine third party trade marks, e.g., <f1onbbc.com>, <redbull-audi.com> and <audisportf1.com>. Again the Respondent’s explanation is that these were registered to be used as fan sites. But the content of these websites do not bear this out.
The Panel accepts the Complainant’s submission that this appears to be a planned blocking strategy of domain names which could potentially be of great value if the Complainant does go ahead with the reported plans. The registration of multiple domain names comprising a combination of trade marks belonging to different parties which may be going into business with one another amounts to a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, demonstrating registration and use in bad faith.
Further the current use of the Domain Names subsequent to notice of the UDRP Complaint is also in bad faith as they cannot be said to be noncommercial use. The Websites promote third party websites and products and services advertised for sale on these websites. The links on the Websites lead to online shopping sites and also third party advertisements. It is intended to capture Internet traffic from Internet users who are looking for information about the Complainant and its products and services. The Domain Names and the content of the Websites are calculated to confuse Internet users that the Respondent is an authorised franchisee, licensee or somehow connected with the Complainant when this is not the case. This shows an intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites are authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraphs 4(b)(ii) and (iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are 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 Domain Names, <volkswagen-formula1.com>, <volkswagenformula1.com>,<volkswagen-f1.com> and <volkswagenf1.com>, be cancelled.
Date: January 13, 2016