WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Anderson Owen
Case No. D2016-0293
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Anderson Owen of New York, United States of America.
2. The Domain name and Registrar
The disputed domain name <vw-poznan.xyz> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 16, 2016.
The Center verified that the Complaint together with the amendment to 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 February 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2016.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on March 23, 2016. 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 Complaint is based on the trademarks VOLKSWAGEN and VW. In support of the Complaint, the Complainant relies on a list of VW trademarks, including International Trademark no. 708041 VW, dating back to July 2, 1998.
The disputed domain name <vw-poznan.xyz> was registered on December 15, 2015.
5. Parties’ Contentions
The Complainant asserts Volkswagen is a company founded in 1937, which is one of the world’s leading automobile manufacturers, the largest carmaker in Europe, and is the owner of the trademarks VOLKSWAGEN and VW, which, by virtue of registration, and very long and extensive worldwide use have become well-known and exclusively associated with the Complainant.
The Complainant asserts to be the owner of famous trademark VW, registered in the European Community since 1998, and also owns a comprehensive list of domain names incorporating both trademarks VOLKSWAGEN and VW, which is an abbreviation of VOLKSWAGEN.
The Complainant asserts the disputed domain name is confusingly similar to its trademarks, as it incorporates the VW trademark, adding word “Poznan” which is a city in Poland where the factory of the Complainant is located, thus being a geographical term, which does not prevent from being confusingly similar to the trademark VW.
The Complainant asserts the Respondent is not licensed or otherwise permitted to use any of the trademarks owned by the Complainant, or to register or use any domain name incorporating any marks or variation thereof. The Respondent is in no way connected with the Complainant, nor with its subsidiaries, and is not commonly known by the disputed domain name.
Furthermore, the Complainant asserts, that based on the fame and reputation of the VOLKSWAGEN mark and its advertising activities all over the world, it can be concluded beyond any doubt the Respondent purposefully registered a domain name, which consists of the Complainant’s famous mark, with the purpose to create the misleading impression of being in some way associated with the Complainant, which is not the case. Therefore, the Respondent would be trying to exploit the fame and reputation of the Complainant’s trademarks, with the possible aim to attract to the Respondent’s website Internet users looking for information on the Complainant and divert them from legitimate websites of the Complainant. Consequently, the Respondent may not claim any rights or legitimate interests in the disputed domain name.
Finally, the Complainant argues the disputed domain name has been registered in bad faith, for the aim of carrying out phishing activities, as it claims it was used in an attempt of getting a wire transfer, by impersonating the Chief of VW Poznan. Furthermore, the Complainant claims the fact the trademarks VOLKSWAGEN and VW are famous all over the world, necessarily constitutes a proof of bad faith in the registration and use of the disputed domain name, as the Respondent must necessarily had been aware of the existence of these trademarks when he deliberately registered the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, it is necessary to examine three elements in order to assess the feasibility of the Complaint:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The domain name holder has no rights or legitimate interests in respect of the domain name;
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The information provided by the Complainant, clearly attests the disputed domain name <vw-poznan.xyz> can be considered substantially identical to the Complainant’s trademark registrations.
In this regard, the addition of term “poznan,” does not diminish the degree of identity existing with the trademark VW owned by the Complainant, considering it is the name of a city in Poland, where the Volkswagen factory of the Complainant is located.
Accordingly, this Panel agrees with the claim made by the Complainant, in the sense that the mere addition of a geographic term to a famous trademark is not enough for the disputed domain name to be deemed different from the Complainant’s trademark, or diminishing the chances of confusion arising from the similarity existing with disputed domain name.
Accordingly, this Panel finds that the disputed domain name <vw-poznan.xyz> is confusingly similar to the registered mark VW, and that this requisite has been satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded the Complaint, thus, it is not possible to know his version of the possible existence of rights or legitimate interests in the disputed domain name. Neither has he refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel interpreted the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.
Moreover, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. On the contrary, the Complainant has effectively demonstrated the following: to be the holder of a registered trademark and domain names, which are prior and substantially identical to the disputed domain name, and that it has not licensed its use or exploitation to the Respondent.
Therefore, the Panel considers that the Complainant has also fulfilled the second condition required by the Policy, being unable to find the existence of any right or legitimate interest in favor of the Respondent in connection with the disputed domain name.
C. Registered and Used in Bad Faith
This third element requires the Complainant to prove that (1) the disputed domain name was registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The disputed domain name incorporates the trademark VW.
It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly imposes a good faith effort to avoid the registration and use of domain names corresponding to trademarks owned by third parties. The onus is on the registrant of a domain name to take the necessary steps to ensure that the registration of domain name does not infringe or violate the rights of third parties.
The Panel finds the Respondent must have had actual knowledge of the Complainant’s mark VW and its rights therein at the time the Respondent registered the disputed domain name and has used the disputed domain name in bad faith. This finding is based on: (i) the Complainant’s mark having a strong reputation and being internationally widely known; (ii) the disputed domain name comprising the Complainant’s mark and the word “poznen” which corresponds to the name of the town where the factory of the Complainant (Volkswagen) is located; (iii) the intent to use the disputed domain name for phishing purposes, claimed by the Complainant and not denied by the Respondent; and (iv) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name.
Consequently, for all these reasons, the Panel finds that the Complainant has met the requirement of 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, <vw-poznan.xyz> be cancelled.
Rodrigo Velasco Santelices
Date: March 30, 2016