WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Andrey Sychev / Privacy protection service - whoisproxy.ru
Case No. D2016-0992
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Andrey Sychev of Moscow, the Russian Federation / Privacy protection service - whoisproxy.ru of Moscow, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.market> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2016, 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 May 19, 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 May 23, 2016. The Registrar further informed the Center that the language of the Registration Agreement for the disputed domain name was Russian. On May 19, 2016, the Center sent a communication, in both English and Russian, inviting the Complainant to state its position on this issue by May 23, 2016, and the Respondent by May 25, 2016. On May 23, 2016, the Complainant filed a statement reiterating its request that the proceeding be held in English. The Respondent did not submit any comments on the language of the proceeding.
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 (in both English and Russian), and the proceedings commenced on May 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 1, 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 Germany in 1937 and is one of the world’s leading automobile manufacturers and the largest carmaker in Europe. The Complainant has been manufacturing all types of automobiles including passenger cars, apparatus for locomotion by land, parts thereof and fittings therefor.
The Complainant is the owner of, among others, the following trademark registrations:
- International Trademark registration No. 702679 for VOLKSWAGEN registered on July 2, 1998 to cover services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 39, 40, 41 and 42;
- International Trademark registration No. 263239 for VOLKSWAGEN registered on December 12, 1962 to cover services in classes 1, 3, 7, 8, 9, 11, 12, 17 and 21;
- European Union Trade Mark registration No. 9383506 for VOLKSWAGEN registered on February 25, 2011 to cover services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 29, 30, 31, 32, 33, 34, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant owns many domain names including VOLKSWAGEN marks, e.g.: <volkswagen.com>, <volkswagen.ru> and <vw.com>.
The disputed domain name was both registered on April 14, 2016. The website under the disputed domain name displays an offer of services by the Registrar.
5. Parties’ Contentions
Firstly, the Complainant contends that <volkswagen.market> is confusingly similar to the VOLKSWAGEN trademark as the disputed domain name reproduces the trademark in its entirety. The Complainant emphasizes that VOLKSWAGEN is a well-known trademark. According to the Complainant, the generic Top-Level Domain (“gTLD”) suffix “.market” does not serve to distinguish the disputed domain name from the registered trademark. The addition of this gTLD suffix indicates to Internet users that it might be an online shop of the Complainant.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. In order to justify the above, the Complainant explains that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. According to the Complainant, the Respondent is in no way connected with it, nor with its subsidiaries. Furthermore, the Complainant contends that the Respondent is not commonly known by the disputed domain name.
Thirdly, the Complainant claims that disputed domain name was registered and has been used in bad faith. The Complainant asserts that the VOLKSWAGEN trademark is famous all over the world, thus the Respondent must have been aware of this fact when he deliberately registered the disputed domain name. According to the Complainant, the Respondent’s obvious purpose was to misleadingly divert consumers to the website under the disputed domain name, causing confusion among consumers by creating the impression of relation with or sponsorship or endorsement of the Respondent by it. The Complainant also contends that it has sent a cease and desist letter to the Respondent stating that the usage of the disputed domain name is unauthorized, however the Respondent has ignored this letter. Furthermore, the Complainant emphasizes that currently the website to which the disputed domain name resolves is inactive which was deemed by previous UDRP cases as a bad faith indicator.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
(i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “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.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that a need to translate the Complaint from English into Russian would result in substantial expenses and undue delay of the proceeding.
The Panel notes that English is indeed very common all around the word. Moreover, the gTLD “.market” which is a part of the disputed domain name is in English which may indicate that the Respondent understands English.
Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
(ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Complainant holds many valid VOLKSWAGEN trademark registrations. The disputed domain name incorporates the Complainant’s VOLKSWAGEN mark in its entirety. As stated by previous UDRP panels, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
In the Panel’s opinion, the gTLD suffix “.market” does not serve to distinguish the disputed domain name from the Complainant’s registered trademarks. On the contrary, the addition of the gTLD “.market” may even confuse Internet users who may easily link the disputed domain name to a website offering goods produced by the Complainant.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the VOLKSWAGEN mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the VOLKSWAGEN mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has ignored the cease and desist letter sent by the Complainant’s representative .
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the VOLKSWAGEN mark was registered years before the disputed domain name. In the Panel’s opinion, the notoriety of the VOLKSWAGEN mark indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name. As concluded by other UDRP panels: the registration of a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith (SeeVolkswagen AG v. Pavel Siroky, Busch CZ s.r.o., WIPO Case No. D2015-2336).
Secondly, the disputed domain name resolves to a website containing advertisements for the Registrar, which this Panel considers an instance of passive holding. As many UDRP panels have indicated in numerous decisions, the fact that a domain name is passively held does not prevent a finding of bad faith (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004‑0245; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232).
Moreover, the Panel finds that the Respondent’s failure to answer the Complainant’s cease and desist letter can be taken into account in a finding of bad faith. In the absence of a plausible explanation from the Respondent as to how and why his registration and use of the Complainant’s mark is appropriate or necessary for the operation of his business or personal affairs, the Panel finds that he registered and used the disputed domain name to take advantage of the worldwide reputation and goodwill of the Complainant and to somehow turn a profit from it.
Therefore, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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.market> be cancelled.
Date: July 15, 2016