WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Yavuz Tokgoz

Case No. D2017-0613

1. The Parties

The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Golebiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp. p., Poland.

The Respondent is Yavuz Tokgoz of Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.tech> 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 March 27, 2017. On March 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2017, 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 the language of the registration agreement of the disputed domain name is Turkish.

Pursuant to the Complaint submitted in English and the registrar verification dated March 28, 2017 stating that Turkish is the language of the registration agreement of the disputed domain name, on March 31, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On April 3, 2017, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any comment regarding 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 April 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2017.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on May 9, 2017. 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 was founded in 1937 and is one of the world’s leading automobile manufacturers and the largest car maker in Europe. The Complainant owns the registered VOLKSWAGEN trademarks in several classes around the world, as well as in Turkey. The trademark VOLKSWAGEN has become exclusively associated with the Complainant and any products bearing the same or similar trademarks will appeal to the public as if such products had emanated from the Complainant.

As stated by the Complainant, in 2014, the Complainant has a 12.9 percent share of the world passenger car market. The Complainant’s sales revenue in 2014 totaled EUR 202 billion while profit after tax amounted to EUR 11.1 billion. The Complainant 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 trademark classes. The earliest trademark registration for Turkey submitted in this case dates back to April 25, 1963.

The Respondent is a Turkish individual who is located in Ankara, Turkey. The disputed domain name <volkswagen.tech> was registered on December 17, 2016. The disputed domain name resolves to an active website in Turkish which contains information related to spare parts and technical services and maintenance. The disputed domain name contains a link, namely “Volkswagen Yedek Parca” meaning “Volkswagen Spare Part” in Turkish, redirecting to a website offering car parts for sale, in particular Volkswagen parts, namely “www.merttugoto.com”.

Complainant sent a cease-and-desist letter to the Respondent on January 4, 2017 and a follow-up email on January 19, 2017, requesting to immediately cancel the disputed domain name, to which the Respondent did not respond.

5. Parties’ Contentions

A. Complainant

In accordance with the Policy, the Complainant requests that the disputed domain name be cancelled. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.

(i) Identical or Confusingly Similar

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. The Complainant is the owner of the VOLKSWAGEN trademark and owns many registrations for the mark. The Complainant has been manufacturing all types of automobiles since 1937. Given its long history, tradition and business activity, the VOLKSWAGEN trademark is globally well-known. The disputed domain name contains the VOLKSWAGEN trademark in its entirety. The only difference between the Complainant’s VOLKSWAGEN trademark and the disputed domain name is the addition of the “.tech” generic Top-Level Domain (“gTLD”) in the disputed domain name. The Panel may ignore the gTLD because it is a functional aspect of the domain name system. The gTLD does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark.

(ii) Rights or Legitimate Interests

The Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register or use any domain name that incorporates the Complainant’s trademarks. The Respondent is in no way connected with the Complainant or any of its subsidiaries. The Respondent is not commonly known by the disputed domain name. Based on the fame and reputation of the VOLKSWAGEN trademark, it can be concluded that the Respondent purposefully registered the disputed domain name to create a false impression of being in some way associated with the Complainant. The Respondent is obviously trying to exploit the fame and reputation of the Complainant’s trademarks. The Respondent is not making a legitimate fair use of the disputed domain name.

(iii) Registration and Use in Bad Faith

The disputed domain name was registered in bad faith. The VOLKSWAGEN trademark is famous around the world, including in Turkey. The Respondent must have been aware of the VOLKSWAGEN trademarks when registering the disputed domain name. By registering the disputed domain name using a well-known trademark, the Respondent is intentionally misleading Internet users by creating the false impression of a relationship with or sponsorship or endorsement by the Complainant. The Respondent’s intent was to exploit the reputation of the Complainant and its trademarks. Bad faith registration and use can be found by the Respondent’s prior knowledge of the Complainant’s trademarks. The Respondent’s activity strongly indicates bad faith registration. The disputed domain name is being used in bad faith. Moreover, the Complainant claims that the Respondent’s aim is to attract Internet users to its website to cause confusion and disrupt the Complainant’s business.

Lastly, the Complainant emphasizes that the Complainant had sent the Respondent a cease-and-desist letter and a follow-up email to which the Respondent never replied. The Complainant claims that the lack of a response to this letter and email is an indication of the bad faith of the Respondent despite the efforts of the Complainant to find an amicable solution to the dispute.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

6.1. 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. The Registrar has confirmed that the registration agreement is in Turkish in this case. The Complaint was filed in English and the Complainant has requested English to be the language of the proceeding. The purpose of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

The Center also notified the Parties that the authority to decide the language of the proceeding lay with the Panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the Parties both in English and Turkish.

Despite the Center’s notification of the Complaint both in Turkish and English, the Panel notes that no objection was made by the Respondent to the Complaint being in English. As well as the Panel understands that the Respondent did not object/reply to the Complainant’s cease-and-desist letter. The Respondent had ample opportunity to raise objections or make known his preference, but he did not. SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400.

The Complainant has submitted its Complaint in English and supporting evidence both in English and Turkish. Moreover, the Complainant is not a Turkish entity. Therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. The Respondent has not objected to the Complainant’s language request and has not come forward to express any interest in this proceeding. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case.

At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, and is of the opinion that both Parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given the fact that the Center proceeded to issue its case-related communications to the Parties both in English and Turkish. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing this proceeding to be conducted in English.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Complainant has rights in the VOLKSWAGEN trademark. It is the registered owner of trademark registrations, including in Turkey, for the VOLKSWAGEN mark. Use and registration of the VOLKSWAGEN mark by the Complainant precede the Respondent’s registration of the disputed domain name by decades. The Panel accepts that the Complainant’s mark is internationally well-known. Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780; Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498; Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191; Volkswagen Financial Services AG v. tangzhou, WIPO Case No. D2013-0574.

The disputed domain name is identical to the Complainant’s trademark. It consists solely of the term “volkswagen” which is identical to the Complainant’s VOLKSWAGEN trademark, and the gTLD “.tech”. The gTLD, being a technical part of the disputed domain name, is not relevant in determining whether the disputed domain name is identical or confusingly similar to the VOLKSWAGEN trademark and is without legal significance. Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Panel is of the opinion that Internet users would fall into a false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar to the Complainant’s well-known VOLKSWAGEN trademark.

The Panel concurs with several prior UDRP panels in relation to VOLKSWAGEN trademarks, 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. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the light of the evidence submitted by the Complainant, and the Panel’s researches, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the VOLKSWAGEN trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights in the VOLKSWAGEN trademarks and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy.

The Panel also accepts that the Respondent is not commonly known by the disputed 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. Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, and from the use made of the disputed domain name as further described below, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.

Finally, the Respondent did not respond to the Complainant’s letter requesting that the Respondent cancel the disputed domain name registration. The Panel concludes that the Respondent has no evidence to rebut the Complainant’s assertions. Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

The requirements of 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a 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.

By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark VOLKSWAGEN, as well as its extensive and intensive use, the Respondent, who appears to be located in Turkey where the Complainant is well known, was aware of the Complainant and its VOLKSWAGEN trademark at the time of the registration of the disputed domain name, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name has to be considered as an inference of bad faith registration.

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).

The disputed domain name used to direct Internet users to a website which contains information related to spare parts and technical services and maintenance. The disputed domain name contains a link, namely “Volkswagen Yedek Parca” meaning “Volkswagen Spare Part” in Turkish, redirecting to a website offering car parts for sale, in particular Volkswagen parts and also those of competing manufacturers, namely “www.merttugoto.com”. Taking into account the notoriety of the Complainant’s trademark VOLKSWAGEN, which was confirmed by a number of previous UDRP panels in recent UDRP cases (Volkswagen AG v. Pavel Siroky, Busch CZ s.r.o., WIPO Case No. D2015-2336; Volkswagen AG v. Aram Baghdasharyan, WIPO Case No. D2015-0057) and the Respondent’s use of the disputed domain name, the Panel is convinced that the Respondent was and is aware of the Complainant’s trademark. In this Panel’s view this establishes bad faith registration of the disputed domain name.

Therefore, in light of the above-mentioned circumstances, in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.

7. Decision

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.tech> be cancelled.

Gökhan Gökçe
Sole Panelist
Date: May 23, 2017