WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Qi Yan
Case No. D2016-0916
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Qi Yan of Taiyuan, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.kim> is registered with West263 International Limited (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 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, and stating that Chinese was the language of the Registration Agreement for the disputed domain name.
On May 12, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 13, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 May 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on June 15, 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 Volkswagen Group owns twelve brands from seven European countries, namely, for Volkswagen passenger cars: Audi, SEAT, SKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati; and for Volkswagen commercial vehicles: Scania and MAN.
In the year 2014, the Volkswagen Group delivered over 10 million cars to customers, corresponding to what the Complainant says was a 12.9 market percent share of the world's passenger cars.
The Complainant owns numerous trade mark registrations (including in China where the Respondent is based) for its Volkswagen brand, including the following:
- International Registration Number 702679 registered on July 2, 1998, designating, inter alia, China;
- International Registration Number 835207 registered on January 21, 2004, designating, inter alia, China;
- European Union Trade Mark Number 009383506 registered on February 25, 2011;
- Chinese Trade Mark Number 227481 registered on May 30, 1985; and
- Chinese Trade Mark Number 777328 registered on February 7, 1995.
The Complainant also owns numerous domain name registrations incorporating the VOLKSWAGEN trade mark including <volkswagen.com>, <volkswagen.org> and <vw.com>. The Complainant operates its main international website at "www.volkswagen.com" which contains information about its products and marketing activities.
The disputed domain name <volkswagen.kim> was registered on April 7, 2016, long after the Complainant had used and registered its trade mark VOLKSWAGEN. As at the date of this decision, the disputed domain name does not resolve to any active website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trade mark VOLKSWAGEN as it completely integrates the VOLKSWAGEN mark and adds the generic Top-Level Domain ("gTLD") ".kim".
The Complainant claims that its VOLKSWAGEN mark is globally well-known and recognisable considering its long history, business activities and market presence in numerous countries. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant claims that the Respondent's main purpose of registering the disputed domain name was to mislead Internet users and exploit the reputation of the Complainant and its trade mark to divert consumer traffic to the Respondent's website. Noting that the website at the disputed domain name is inactive, the Complainant states that the Respondent's passive holding of the disputed domain name incorporating the Complainant's widely-known trademark is in bad faith. The Complainant therefore contends that the disputed domain was registered and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Preliminary Issue
Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names <volkswagen.kim> is registered in Latin characters, rather than Chinese script; and
(b) according to the reverse WhoIs search independently conducted by the Panel, the Respondent also owns other domain names (such as <dailymotion.pink>, <dailymotion.review>, <nj.house> and <no1.family>) comprising Latin characters and words with ordinary English meaning.1
Additionally, the Panel notes that:
the Center has notified the Respondent of the proceeding in both Chinese and English;
the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and
the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) English shall be the language of the proceeding and the decision will be rendered in English.
6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the VOLKSWAGEN mark by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant's trade mark VOLKSWAGEN in its entirety. The addition of the gTLD ".kim" does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).
The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the VOLKSWAGEN trade mark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "volkswagen".
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.
As at the date of the decision, the disputed domain name does not resolve to any active website. The Respondent has failed to provide any evidence to establish its rights or legitimate interests in the disputed domain name, and there appears to be no other evidence before the Panel that would do so.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted 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 mark 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.
The Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview 2.0, paragraph 3.2).
The Complainant and its trade mark VOLKSWAGEN enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. A cursory Internet search would have disclosed the VOLKSWAGEN trade mark and its extensive use by the Complainant.
Thus a presumption arises that the Respondent was aware of the Complainant's VOLKSWAGEN trademarks and related domain names when it registered the disputed domain name. Registration of a domain name that incorporates a complainant's widely-known trade mark suggests opportunistic bad faith.
The Respondent has failed to provide any evidence of actual or contemplated bona fide use of the disputed domain name. The Panel also notes that efforts by the Center to contact the Respondent at the email address and physical address provided by the Registrar failed, which suggests that the Respondent has provided false contact details. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent's passive holding of the disputed domain name amounts to bad faith for the purpose of the Policy.
Taking into account all the circumstances, it is appropriate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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.kim>, be transferred to the Complainant.
Sok Ling MOI
Date: July 2, 2016
1 As to the legitimacy of the Panel performing individual searches, see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").