WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Domain Admin, whoisprotection.biz / Muzaffer Elidemir
Case No. D2016-1333
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Domain Admin, whoisprotection.biz of Istanbul, Turkey / Muzaffer Elidemir of Kırıkkale, Turkey.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.ist> is registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2016. On June 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 July 1, 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 July 4, 2016. Further to the Center’s communication regarding the language of the proceeding in both Turkish and English, the Complainant submitted its request for English to be the language of the proceeding on July 4, 2016. The Respondent did not reply.
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 English and Turkish, and the proceedings commenced on July 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2016.
The Center appointed Uğur G. Yalçıner as the sole panelist in this matter on August 8, 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 Volkswagen founded in 1937 and is one of the world’s leading automobile manufacturers and the largest car maker in Europe. As stated by the Complainant, as at 2014, the Group has a 12.9 percent share of the world passenger car market. The Group’s sales revenue in 2014 totaled EUR 202 billion while profit after tax amounted to EUR 11.1 billion. The Group comprises twelve brands – Volkswagen Passenger Cars, Audi, Seat, Škoda, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and MAN.
The Complainant is the owner of numerous domain names containing the trademark VOLKSWAGEN mainly <volkswagen.com>, <volkswagen.org>, <vw.com> and <volkswagen.com.tr>. The Complainant owns registered trademarks for VOLKSWAGEN, and has designated an extensive range of goods and services in all 45 trade mark classes. The earliest trademark registration for Turkey submitted in this case dates back to December 27, 1997.
The Respondent is a Turkish individual who is located in Kırıkkale, Turkey. The disputed domain name <volkswagen.ist> was registered on May 11, 2016. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant’s assertions may be summarized as follows:
The Complainant alleges that the disputed domain name <volkswagen.ist> is identical with or confusingly similar to the trademarks of the Complainant. The Complainant has several trademark registrations for VOLKSWAGEN worldwide, including in Turkey. The Complainant also alleges that the addition of the generic Top-Level Domain (“gTLD”) “.ist” is not distinctive.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant 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. The Respondent is in no way connected with the Complainant, nor with its subsidiaries.
The Respondent is not commonly known by the disputed domain name. Based on the fame and reputation of the VOLKSWAGEN mark and the advertising activities of the Complainant all over the world, the Complainant submits that “it can be concluded beyond any doubt” that the Respondent purposefully created a domain name, which consists the Complainant’s famous mark, and registered it to create the misleading impression of being in some way associated with the Complainant, which is not the case. The Respondent was and is “quite obviously” trying to exploit the fame and reputation of the Complainant’s and its trademarks. The possible aim was to attract to the Respondent’s website Internet users looking for information on the Complainant and divert them from legitimate websites of the Complainant. The Respondent has no legitimate reason for registering the Complainant’s trademark as a domain name. The Respondent has registered and is using the disputed domain name illegitimately.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith.
The Complainant states that it has tried to contact with the Respondent via email and all emails were returned as undelivered email. The Complainant also states that the Respondent purposefully provided an invalid e-mail address to prevent the Complainant from contacting it.
The Respondent must have been aware of the Complainant’s famous marks when it registered the disputed domain name. Creating a domain name by using a well-known trademark, in which the Respondent has no rights, misleads Internet users. The Respondent’s obvious purpose was to divert consumers to the website under the disputed domain name, causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant. It is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and its trademarks.
The Complainant contends that the website is inactive. The Respondent is holding the disputed domain name passively and such passive holding is deemed a bad faith indicator.
Furthermore, the Respondent is the registrant of at least 68 other domain names. Many of them contain third parties’ trademarks such as <suzuki.help> or <carrefour.help>. The websites at those disputed domain names are inactive.
On the basis of the above, the Complainant requests the cancellation of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements are present:
(i) The disputed domain name registered by the Respondent 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 respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
6.1 Language of the Proceeding
Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between 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.
According to information received from the Registrar, the language of the registration agreement for the disputed domain name is Turkish. The Complainant has submitted the Complaint in English and subsequently submitted a substantiated request that the language of the administrative proceeding be English. The Respondent has not submitted any objection to the Complainant’s request that the language of the administrative proceeding be English, despite the Center’s invitation, done both in English and Turkish, to comment on the language of proceedings. The Panel also notes that the notification of this Complaint to the Respondent has been done both in English and Turkish by the Center. The Panel also considers it relevant that the Complainant’s trademark is not a Turkish term. For these reasons, given the circumstances of the case, the Panel agrees to hold the proceeding in English as requested by the Complainant, in accordance with paragraph 11(a) of the Rules.
A. Identical or Confusingly Similar
The Panel agrees that the disputed domain name <volkswagen.ist> is identical to the Complainant’s
trademark, since the gTLD (in this case “.ist”) is usually disregarded under the identity or confusing similarity test under the first element of the Policy.
The Panel concurs with several prior UDRP panels, which have held that when a domain name wholly incorporates a complainant’s registered mark that may be sufficient to establish confusing similarity for purposes of the Policy.
As a conclusion, the Panel finds that the disputed domain name is identical to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
The Panel notes, based on the available record, that the Respondent does not appear to have any relevant registered trademarks or trade names and that no license or authorization of any other kind has been given by the Complainant to use its registered trademark.
Additionally, based on the facts described above, the Panel notes that, the Respondent has not replied to any of the Complainant’s or the Center’s correspondence. The Panel also confirms that there is no active web site at the disputed domain name and the Respondent has not submitted any evidence of 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.
Therefore, The Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraphs 4(a)(iii) and 4(b) of the Policy, the Complainant may show one of the following circumstances, in particular but without limitation, in order to demonstrate the Respondent’s registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 confirms the reputation and recognition of the Complainant’s trademark VOLKSWAGEN and is convinced that the Respondent must have known of this trademark when it registered the disputed domain name. Several UDRP panels have held that registering and using domain names which correspond to widely-known trademarks suggests bad faith (Philip Morris USA Inc. v. Luca Brignoli, WIPO Case No. D2014-1180; CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413).
Several UDRP panels have found that the apparent lack of so-called active use (e.g., to resolve to a web site) of a disputed 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 (see paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). The Panel finds that in the circumstances of the present case, and in light of the Panel’s finding above, the Respondent’s passive holding of the disputed domain name amounts to use of bad faith for purposes of the Policy.
As such, taking into account all the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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.ist> be cancelled.
Uğur G. Yalciner
Date: August 22, 2016