WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Zhan Jie
Case No. D2016-0403
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Zhan Jie of Haikou, Hainan, China.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.wiki> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 29, 2016. On February 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2016, 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.
On March 2, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 3, 2016, the Complainant requested that English (or both English and Chinese) be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 (in both English and Chinese) of the Complaint, and the proceedings commenced on March 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 12, 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 Complainant was founded in May 1937 and is one of the leading automobile manufacturers in the world. The Complainant is Europe's largest car manufacturer. The Complainant's group delivered a 12.9 percent share of the world's passenger cars in 2014. The Complainant's group comprises twelve brands from seven European countries: Volkswagen Passenger Cars, Audi, SEAT, SKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and MAN.
The Complainant owns registrations and applications for the VOLKSWAGEN mark.
VOLKSWAGEN trademark registrations owned by the Complainant cover a range of goods and services in 45 trademark classes. For example, the Complainant owns the following trademark registrations:
VOLKSWAGEN – International Registration serial number 702679 registered on July 2, 1998, designating inter alia China; VOLKSWAGEN – Community Trademark serial number 009383506 registered on February 25, 2011; VOLKSWAGEN – Chinese Trademark serial number 227481 registered on May 30, 1985; and
VOLKSWAGEN – Chinese Trademark serial number 777328 registered on February 7, 1995.
The Complainant also owns multiple domain names consisting of the word "volkswagen", such as <volkswagen.com> and <volkswagen.org>.
The disputed domain name <volkswagen.wiki> was registered on November 19, 2015 by the Respondent.
The disputed domain name currently resolves to an inactive webpage.
5. Parties' Contentions
The Complainant argues that the disputed domain name <volkswagen.wiki> is confusingly similar to the Complainant's trademarks.
The Complainant further argues that the use to which the website is put has no bearing upon the issue of whether the disputed domain name is confusingly similar to the trademark.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and he is not related in any way with the Complainant.
The Complainant argues that none of the circumstances listed under paragraph 4(c) of the Policy are given in the present case: The Respondent is not authorized or related to the Complainant; the Respondent is not commonly known by the disputed domain name; and the Respondent is making illegitimate use of the disputed domain name with intent to misleadingly divert Internet users to his website.
According to the Complainant, it can be concluded that the Respondent purposefully created the disputed domain name, which consists of the Complainant's famous mark, in order to exploit the fame and reputation of the Complainant's trademarks.
The Complainant argues that creating the disputed domain name by using a well-known trademark constitutes the Respondent's bad faith.
The Complainant further argues that the Respondent's intention was to mislead Internet users and to divert consumers to the website under the disputed domain name. In this, the Respondent intended to cause confusion among consumers by creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant.
The Complainant argues that even though the disputed domain name is inactive now, it can be used at anytime. Furthermore, the Complainant claims that the fact that a domain name is held passively can be deemed as a bad faith indicator.
The Complainant sent an English language cease and desist letter to the Respondent's email address on February 2, 2016 requesting immediate cancellation of the disputed domain name. The Complainant sent another letter via email on February 25, 2016 sustaining its request of cancellation.
The Complainant claimed that the Respondent replied to this email in Chinese, confirming that he registered the disputed domain name and refusing to cancel the disputed domain name.
For all of the above reasons, the Complainant requests the cancellation of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of March 1, 2016.
The Complainant requested that the language of proceeding be English.
The Complainant, a German based company, claims that it does not communicate in Chinese and submitting all documents in Chinese would entail substantial expenses on it for translation. The Complainant argues that English is one of the most popular languages in the world and is commonly used in international communication.
Furthermore, the Complainant claims that the Respondent registered the disputed domain using the Latin alphabet and used a suffix ".wiki" in the disputed domain name, which is an abbreviation from a globally known English word that functions as a domain name "wikipedia".
In addition, the Complainant claims the fact that the Respondent replied to the cease and desist email indicates that he understood the English language content of that letter.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
c) The Respondent did not object to the Complainant's request that English be the language of proceeding.
Upon considering the above, the Panel rules that English be the language of the proceeding.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of different VOLKSWAGEN trademarks.
The disputed domain name reproduces entirely the Complainant's VOLKSWAGEN trademarks.
The Complainant argues that this Panel should apply the recent UDRP panel decision regarding <volkswagen.video>, where it was stated that the ".video" suffix did not alter the identity of the disputed domain name with the Complainant's trademarks (Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175). In that case the panel concluded that the ".video" component should be disregarded in the comparison between the mark and the disputed domain name.
Previous UDRP panels have ruled that country code Top-Level Domain ("ccTLD") suffixes generally have no capacity to distinguish a domain name from a trademark (see Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080). This is applied mutatis mutandis to new generic Top-Level Domains ("gTLDs") such as ".wiki" and others.
The addition of the new gTLD ".wiki" to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The new gTLD ".wiki" is typically without legal significance and is generally to be disregarded when determining the confusing similarity.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the VOLKSWAGEN trademarks in which the Complainant has rights.
C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant presented sufficient evidence to show that the Complainant's VOLKSWAGEN trademark is well-known. Other UDRP panel decisions support such a finding. See Volkswagen AG, Bentley Motors Limited, Automobili Lamborghini S.p.A. v. Dzianis Zakharenko, WIPO Case No. D2015-0347; Volkswagen AG v. Todd Garber, supra. It is therefore suggestive that the Respondent was aware of the Complainant's well-known trademark when he registered the disputed domain name.
The disputed domain name is confusingly similar to the Complainant's well-known trademarks. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site". See Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095. To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy. While the disputed domain name is currently inactive, such an event is likely to occur in the future, and would therefore weigh in favor of the Complainant when the Respondent fails to respond.
Further the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Based on the evidence that was presented to the Panel, including the fame of the Complainant's well-known trademark, the use of the Complainant's trademark in the disputed domain name, the fact that the Respondent responded to the English cease and desist email but refused to cancel the disputed domain name, the passive use of the disputed domain name and the Respondent's failure to answer the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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.wiki> be cancelled.
Date: April 25, 2016