WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Brad Hanson, tradessupersite
Case No. D2016-0429
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Brad Hanson, tradessupersite of Sunbury-on-Thames, the United Kingdom of Great Britain and Northern Ireland (the "UK"), self-represented.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") <volkswagencommercialvehicles.com> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2016. On March 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 4, 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.
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 March 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2016. The Respondent sent an email communication on March 15, 2016 acknowledging receipt of the Center's March 11 communication and generally asking "what the issue is" . The Center responded on March 16, 2016. The Respondent did not file a formal response by the due date.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on April 13, 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 date of the Domain Name registration was confirmed by the Registrar to be June 19, 2010. The Complainant provided evidence of multiple trademark registrations for the mark VOLKSWAGEN including, inter alia, Community Trademark, No. 000703702, (registered on May 10, 1999) and UK Trademark No. 00000727272, (registered on February 23, 1954), that well predate the date of the Domain Name registration.
The Panel also conducted an independent search to determine that the Domain Name currently resolves to a page with an "error" message, and the website currently appears to be inactive.
Since the Respondent did not respond to the Complainant's contentions, the facts regarding the use and fame of the Complainant's mark, as well as other statements regarding correspondence between the parties, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties' Contentions
The Complainant alleges that VOLKSWAGEN was founded on May 28, 1937 and is one of the world's leading automobile manufacturers and the largest carmaker in Europe. In 2014, the Volkswagen Group increased the number of vehicles delivered to customers to 10.137 million corresponding to a 12.9 percent share of the world passenger car market. The Volkswagen Group sales revenue in 2014 totaled EUR 202 billion, while profit after tax amounted to EUR 11.1 billion (2013: EUR 9.1billion).
Further, the Complainant alleges that by virtue of worldwide registration, very long and extensive worldwide use of the VOLKSWAGEN trademark by the Complainant in relation to excellent quality of products and intensive publicity campaign organized by the Complainant, the trademarks VOLKSWAGEN have become exclusively associated with the Complainant and any products bearing the same or similar trademark will appeal to the public as such products having emanated from the Complainant.
In addition, the Complainant also alleges it owns a number of domain names which contain the term "Volkswagen" including <volkswaten-commercial-vehicles.com>, which it has used since at least as early as 2007 to host a website to communicate with the public about the product. The Complainant further alleges that the Respondent's clear intention of registration of the Domain Name was to cause confusion with the Complainant's earlier registered official domain name related to Volkswagen commercial vehicles, <volkswagen-commercial-vehicles.com>.
The Complainant alleges that it sent the Respondent a Cease and Desist letter by email on February 2, 2016, and again on February 24, 2016 requesting the voluntary transfer of the Domain Name to the Complainant. The Complainant alleges that the Respondent did not respond.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark VOLKSWAGEN. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the terms "commercial vehicles" does not prevent a finding of confusing similarity – and indeed enhances the concern. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions. No further communication was received from the Respondent other than the email referenced above.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VOLKSWAGEN.
The Domain Name contains the Complainant's VOLKSWAGEN mark in its entirety followed by "commercial vehicles". If anything, the addition of the descriptive terms "commercial vehicles" underscores an attempted connection by the Respondent in the Domain Name to the trademark of the Complainant.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. Further, the Panel finds that the addition of the words "commercial vehicles" in the Domain Name does not change the overall impression of the designation being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating "The incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark VOLKSWAGEN, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. If the Respondent fails to do so, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant's trademark and reputation, and given the fact that the Domain Name is identical to another domain name held by Complainant merely deleting the "hyphens", the Panel agrees with the Complainant's claims that the Respondent has registered the Domain Name with full knowledge of the Complainant's trademark for the purpose of misleading and diverting Internet traffic. Even though the website is currently inactive, the Panel agrees that the holding of the Domain Name is in "bad faith".
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant's mark when it registered the Domain Name, and that the continued holding of the Domain Name is in bad faith.
It has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name's registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D'Estalvis I Pensions de Barcelona ('La Caixa') v. Eric Adam, WIPO Case No. D2006-0464); and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.
Even where the Domain Name resolves to an "error" page, the Panel does not believe that it changes the finding. Under WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2, regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can. WIPO Overview 2.0 states, "with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances at the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere 'parking' by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)." See WIPO Overview 2.0, paragraph 3.2; e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Moreover, the Panel finds compelling factual and circumstantial evidence in the record that the Respondent is a serial cybersquatter, and that his pattern of conduct clearly demonstrates bad faith. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798.
The Panel's finding of bad faith use and registration is consistent with holdings in other UDRP cases in which the trademark VOLKSWAGEN has been confirmed to be well-known by UDRP Panels, and in which the panels found that the subject domain names were registered and used in bad faith. See Volkswagen AG v. Aram Gabhdasaryan, WIPO Case No. D2015-0057 stating "The Complainant has undoubted, uncontested rights in the trademark VOLKSWAGEN both by virtue of its numerous trademark registrations around the world and as acquired through widespread use for over 75 years (…) The Panel is in no doubt that the Respondent had the Complainant and its rights in the VOLKSWAGEN mark in mind when he registered the Domain Name". See also Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175, in which the Panel stated: "The reputation of the Complainant's trademark is indeed indisputable and widespread.(...) In line with prior UDRP decisions, the Panel concludes that the willful, unauthorized registration of a domain name identical to the Complainant's well-known trademark amounts to a registration in bad faith."
Given the evidence of the Complainant's prior rights in the mark, the timing of the registration of the Domain Name, together with evidence of a pattern of behavior by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, 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 Domain Name, <volkswagencommercialvehicles.com>, be transferred to the Complainant.
Ellen B Shankman
Date: April 18, 2016