WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Milena Milovanov
Case No. D2016-2117
1. The Parties
Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Milena Milovanov of Hannover, Germany.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.engineer> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 16, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 25, 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
Complainant is a stock corporation organized under the laws of Germany and belongs to the world's leading automobile manufacturers.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation "Volkswagen", inter alia:
- Word mark VOLKSWAGEN, European Union Intellectual Property Office ("EUIPO"), Registration No. 000703702, Registration Date: May 10, 1999, Status: Active;
- Word mark VOLKSWAGEN, European Union Intellectual Property Office ("EUIPO"), Registration No. 002700342, Registration Date: August 27, 2003, Status: Active;
- Word mark VOLKSWAGEN, European Union Intellectual Property Office ("EUIPO"), Registration No. 009383506, Registration Date: February 25, 2011, Status: Active.
Respondent is residing in Germany. The disputed domain name was registered on September 8, 2016; by the time of the rendering of this Decision, it redirects to a standardized parking page at "www.volkswagen.engineer" stating that the website is under construction ("befindet sich derzeit im Aufbau").
Complainant sent a cease-and-desist letter to Respondent on September 19, 2016 and a follow-up email on September 26, 2016, requesting to immediately cancel the disputed domain name, to which Respondent did not respond.
Complainant requests that the disputed domain name be cancelled.
5. Parties' Contentions
Complainant asserts that it is one of the world's leading automobile manufacturers and the largest carmaker in Europe. Due to very long and extensive worldwide use of the VOLKSWAGEN trademark, it is exclusively associated with Complainant. Also, Complainant is the registrant of a large number of domain names containing the VOLKSWAGEN trademark, including <volkswagen.com>.
Complainant suggests that the disputed domain name is confusingly similar to Complainant's VOLKSWAGEN trademark, as it incorporates it in its entirety, simply adding the generic Top-Level Domain ("gTLD") ".engineer".
Complainant also claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or any variations thereof, (2) Respondent is in no way connected with Complainant, (3) Respondent is not commonly known by the disputed domain name, but has registered it to create the misleading impression of being in some way associated with Complainant which is not the case.
Finally, Complainant argues that the disputed domain name was registered and is being used by Respondent in bad faith since (1) Respondent never responded to Complainant's pre-procedural correspondence of September 19 / 26, 2016, (2) the VOLKSWAGEN trademark is famous all over the world, so that Respondent must have been aware of it when deliberately registering the disputed domain name and (3) Respondent's obvious purpose was to misleadingly divert consumers to the website under the disputed domain name, causing confusion in the way of creating the impression of a relation with or sponsorship or endorsement of Respondent by Complainant, thereby exploiting the reputation of Complainant and its trademarks.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <volkswagen.engineer> is confusingly similar to the VOLKSWAGEN trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the VOLKSWAGEN trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. 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). The existence of the gTLD ".engineer" is not in contrast to this finding. There is a consensus view among UDRP panels that the applicable gTLD in a disputed domain name would usually be disregarded under the identity or confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2); moreover, even if the gTLD would be taken into account, it needs to be recognized that the term "engineer" refers to Complainant's core business of car manufacturing and, therefore, is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant's VOLKSWAGEN trademark in the disputed domain name.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant's undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's VOLKSWAGEN trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with that name. Finally, UDRP panels have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, may not of itself confer rights or legitimate interests in the disputed domain name (see WIPO Overview 2.0, paragraph 2.2).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0 paragraph 2.1). In the case at hand, however, Respondent did not come forward with any reasonable explanations or contentions in reply to Complainant's allegations, neither as they were included in the Complaint duly notified to Respondent by the Center on October 26, 2016, nor in the pre-procedural communication of September 19 / 26, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
UDRP panels have found that the apparent lack of a so-called active use of a domain name without any active attempt to sell it or to contact the trademark holder (passive holding) does not as such prevent a finding of bad faith, if an examination of all the circumstances of the case still indicates that Respondent is acting in bad faith; indicative circumstances may be that Complainant has a well-known trademark and that Respondent has not filed any substantive Response to Complainant's contentions (see WIPO Overview 2.0, paragraph 3.2).
Complainant states - and Respondent has not contested that line of argumentation - that Respondent must have been aware of the worldwide famous VOLKSWAGEN trademark when deliberately registering the disputed domain name. For the Panel, it is important to note that the disputed domain name combines Complainant's VOLKSWAGEN trademark and the gTLD ".engineer" which directly refers to Complainant's core business of car manufacturing. Against this background, it is reasonable to find that the registration of the disputed domain name by Respondent indeed took place with full knowledge of Complainant's VOLKSWAGEN trademark. In the absence of any other reasonable explanation as to why Respondent should rely on the disputed domain name and given that Respondent has brought forward nothing in substance relating to the intended use of the disputed domain name that would have allowed the Panel to hold for Respondent, the Panel has no difficulty in finding that Respondent has registered and uses the disputed domain name in a manner which at least takes unjustified and unfair advantage of the VOLKSWAGEN trademark's fame and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of 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.engineer> be cancelled.
Stephanie G. Hartung
Date: December 2, 2016