WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Wang Cong Hui
Case No. D2017-1416
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Gołębiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp. p., Poland.
The Respondent is Wang Cong Hui of Jiaxing, Zhejiang, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.我爱你> (the "Domain Name") is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2017. On July 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 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. On July 27, 2017, the Respondent submitted an email indicating that it received an email about the Domain Name and using the Domain Name never does harm to others.
On July 27, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 28, 2017. The Respondent requested that Chinese be the language of the proceeding on July 31 2017.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2017. The Response was filed in English with several parts in Chinese with the Center on August 23, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on September 11, 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 is part of the Volkswagen Group (the "Group"). It was founded in 1937 and is one of the world's leading automobile manufacturers and the largest car maker in Europe. As at 2015, the Group has a 12.3 percent share of the world passenger car market. The Group sales revenue in 2016 totaled EUR 217.3 billion while profit after tax amounted to EUR 5.4 billion.
The Group comprises 12 brands – "Volkswagen Passenger Cars", "Audi", "SEAT", "SKODA", "Bentley", "Bugatti", "Lamborghini", "Porsche", "Ducati", "Volkswagen Commercial Vehicles", "Scania" and "MAN".
The Complainant uses the "Volkswagen" brand in connection with its cars. Through extensive use over the years it has become a well-known brand. This includes an extensive presence in the Chinese market which is where the Respondent is located. The Chinese division of the Group sold about 3.5 million cars (2015) in China and is the second largest foreign car maker present in the Chinese market.
The VOLKSWAGEN trade mark is registered globally, including China, across an extensive range of goods and services in all 45 trade mark classes. The earliest registration submitted in evidence dates back to 1998. The Complainant also owns a large number of domain names containing the VOLKSWAGEN mark both under generic and country code Top-Level Domains. They include the domain names <volkswagen.com>, <volkswagen.org> and <vw.com>.
The Respondent registered the Domain Name on May 19, 2017. It was initially connected to an inactive website (the "Website"). The Website resolves to <volkswagen.xn-6qq986b3>. After receiving two cease and desist letters from the Complainant's representatives on May 29 and June 7, 2017, the Respondent changed the content of the Website to provide information on cakes and desserts together with some photos. Between June 29 and July 21, 2017, the content of the Website was changed again to display stock photos and download and view movies and computer programs. The Domain Name is now connected to stock photos again with the word "Volkswagen" in logo form at the top of the home page and the quote "A man can fail many times, but he isn't a failure until he begins to blame somebody else." The same content can be found on the websites connected to the domain names, <mercedes.我爱你> and <toyota.我爱你>. These two domain names are also registered in the name of the Respondent.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent denies that the Domain Names should be transferred. He contends that the Domain Name is connected to a website which is for personal use and has nothing to do with the Complainant's VOLKSGWAGEN trade mark. It is not used for commercial gain but as a personal blog to distribute wall papers and apps for free. The use of the Domain Name also does not prejudice any party nor does it interfere with the Complainant's interests. The Respondent also alleges that he has never received any communication from the Complainant before the proceeding.
6. Discussion and Findings
6. 1 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in Paragraph IV of the Complaint that the language of the proceeding should be English. The Complainant contends that it is a German based internationally operating company which does not communicate in Chinese. Having to submit the documents in Chinese will unduly delay the process and will also cause the Complainant to incur substantial expense for translation. The Respondent is likely to understand English, being one of the most popular languages in the world and commonly used in international communications. The Domain Name is in Latin alphabet which is also used in the English language.
The Respondent submits that Chinese should be language of the proceeding. He says that he is a student from China and is not able to fully understand the Complaint.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel finds that the Website has content in the English language. Further the Respondent has responded to the Center in the English language on two occasions which provides sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the trade mark VOLKSWAGEN.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Name contains the Complainant's distinctive trade mark, VOLKSWAGEN, in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD"). The gTLD in this case is "我爱你"or "I love you" in Chinese. Even if the gTLD "我爱你" is taken into account, it is a descriptive expression of feeling which does nothing to minimize the risk of confusion. Rather, it may add to it because of its descriptive nature and be read to mean "I love Volkswagen".
The Panel finds that the Domain Names is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that it has never granted the Respondent with the right to use or register the Trade Mark as a domain name or for any other reason. The Respondent is in no way connected with the Complainant or any of its subsidiaries. The Respondent is not commonly known by the Domain Name. It has no independent right to the Domain Name. The registration of domain names which comprise the well-known trade mark of another's cannot amount to legitimate activity in connection with the Domain Name. The Respondent has also not shown that he is making legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register and use a well-known trade mark which he has no connection to for a personal website use. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the VOLSWAGEN trade mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name. The trade mark is one of the world's most well-known trade marks which has no other meaning except as a trade mark. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the domain name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In his Response, the Respondent has not denied his awareness of the Complainant's trade mark. Further he has also registered two other famous trade marks of car manufacturers which is evidence of his knowledge of the Complainant's mark. The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Website displays the same content as the websites connected to the domain names, <mercedes.我爱你> and <toyota.我爱你>. These two domain names which consist of well-known trade marks of car manufacturers are registered in the name of the Respondent. One of the examples of a bad faith registration is contained in paragraph(b)(ii) of the Policy ("you have 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 you have engaged in a pattern of such conduct"). This is part of a flagrant pattern of conduct as the Respondent is engaged in a pattern of registration of a series of well-known car manufacturers' trade mark and therefore is using the Domain Name in bad faith.
Further, by using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Website or services on the Website. This also amounts to bad faith under paragraph 4(b)(iv) 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 Domain Name <volkswagen.我爱你> be cancelled.
Date: September 18, 2017