WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Cameron Jackson
Case No. D2016-1910
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Cameron Jackson of Kingston, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <volkswagen.lol>, <volkswagenauto.xyz>, and <volkswagencars.lol> are registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2016. On the same date, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names. On September 20, 2016, the Registrar transmitted to the Center its verification response disclosing the disputed domain names' registrant of record and contact information, which differed from the respondent and contact information contained in the Complaint. On October 5, 2016, the Center notified the Complainant of the registrant and contact information provided by the Registrar, and invited the Complainant to amend the Complaint. The Complainant filed an Amendment to the Complaint, on October 7, 2016, identifying Cameron Jackson as the Respondent.1
The Center verified that the Complaint together with the Amendment 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 October 11, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was October 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 1, 2016.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on November 7, 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 identifies itself as "one of the world's leading automobile manufacturers and the largest carmaker in Europe." It has used the VOLKSWAGEN mark worldwide for its products and services, and has obtained registrations of various VOLKSWAGEN marks in a number of jurisdictions, including international registration number 702679, registered on July 2, 1998. In addition, the Complainant or its affiliated entity has registered dozens of domain names incorporating the VOLKSWAGEN mark, including <volkswagen.com>, on June 16, 1995.
The disputed domain names were registered on the dates indicated: <volkswagen.lol> (on August 8, 2016); <volkswagencars.lol> (August 19, 2016); and <volkswagenauto.xyz> (August 30, 2016). The disputed domain names resolve to Registrar parking pages.
5. Parties' Contentions
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.
In addition, the Complaint states, inter alia:
"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."
"VOLKSWAGEN trademark is famous all over the world."
"The Respondent has been involved in numerous WIPO UDRP proceedings before and has been found guilty of serial cybersquatting."
The Complainant requests that the disputed domain names be cancelled.
The Respondent did not reply to the Complainant's contentions. Paragraphs 5(f) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint in such circumstances. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent's default.
6. Discussion and Findings
In order to prevail on the merits, the Complainant must satisfy each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the mark, VOLKSWAGEN. The Panel determines that each of the disputed domain names is identical or confusingly similar to the Complainant's mark. The disputed domain name <volkswagen.lol> differs from the Complainant's mark only with the addition of the generic Top-Level Domain ("gTLD") (".lol"), a technical requirement of the domain name. In the other two disputed domain names, <volkswagenauto.xyz> and <volkswagencars.lol>, VOLKSWAGEN plays the leading role. The addition of the generic terms "auto" and "cars" (which, incidentally, identify the Complainant's products) is insufficient to defeat confusing similarity.
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has met its initial burden of making a prima facie showing. Thus, the Respondent has the burden to demonstrate any such rights or legitimate interests. The Respondent has defaulted in this mandatory proceeding. The Panel is unable to ascertain any evidence that would demonstrate the Respondent's rights or legitimate interests in the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that each disputed domain name "has been registered and is being used in bad faith." Paragraph 4(b) provides a non-exhaustive list of circumstances that are "evidence of the registration and use of a domain name in bad faith".
It is difficult for the Panel to conclude that the Respondent did not know of the Complainant or its marks when registering the disputed domain names. The correspondence between the parties indicates that the Respondent registered the disputed domain names for the purpose of selling them to the Complainant for consideration in excess of out-of-pocket costs directly related to the disputed domain names, as set forth under paragraph 4(b)(i).
In addition, the Panel notes that Internet users who resort to the disputed domain names are taken to websites whose content includes primarily: "Welcome to [the respective disputed domain name]". Yet inactive use of the disputed domain names does not preclude a determination of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.2. Instead, the Panel may consider all relevant circumstances in assessing the bad faith element. Here, the well-known nature of the Complainant's mark, along with the Respondent's attempts to shield its identity, further supports the determination of bad faith.
The third element is present.
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 names <volkswagen.lol>, <volkswagenauto.xyz>, and <volkswagencars.lol> be cancelled.
Date: November 21, 2016
1 In the original Complaint, as revealed by the Registrar, a privacy service shielding the underlying registrant was named as the respondent.