WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Fabiano Barretto

Case No. D2017-2013

1. The Parties

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

Respondent is Fabiano Barretto of Salvador, Bahia, Brazil.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.surf> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2017. On October 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2017, 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 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 21, 2017.

The Center appointed Gary J. Nelson as the sole panelist in this matter on December 1, 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

Complainant is a company headquartered in Germany, and operates within the automobile industry.

Complainant is the registered owner of many trademarks for or incorporating VOLKSWAGEN. Complainant is the owner of trademark registrations throughout the world for VOLKSWAGEN. Specifically, Complainant owns the following trademark registrations in the indicated geographic territories, among others:

Geographic Territory

Registration no.

Mark

Registration date

European Union

EUTM 009383506

VOLKSWAGEN

February 25, 2011

International Registration

(with an extension into the United States of America)

IR 702679

VOLKSWAGEN

July 2, 1998

Brazil

BR 002171511

VOLKSWAGEN

January 21, 1969

 

The disputed domain name was registered on June 22, 2017. At the time of the filing of the Complaint, the disputed domain name resolved to an undeveloped website containing pay-per-click links related to Complainant's business.

5. Parties' Contentions

A. Complainant

Complainant was founded on May 28, 1937, and is one of the world's leading automobile manufacturers and the largest carmaker in Europe. In 2015, Complainant delivered automobiles to an estimated 9.931 million consumers. Sales revenue in 2016 totaled EUR 217.3 billion.

Complainant has an extensive presence in the Brazilian market where Respondent is located.

Complainant controls twelve brands from seven European countries, including Volkswagen Passenger Cars, Audi, SEAT, SKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and MAN.

Complainant is the owner of numerous trademark registrations in many different jurisdictions comprising entirely of, or containing, VOLKSWAGEN.

Respondent registered the disputed domain name on June 22, 2017, without the permission of Complainant.

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and has subsequently used and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns rights in the VOLKSWAGEN trademark and that the disputed domain name is identical to Complainant's VOLKSWAGEN trademark.

Where a complainant owns a nationally or regionally registered trademark or service mark, this fact is prima facie evidence that satisfies the threshold requirement of having trademark rights for the purposes of standing to file a UDRP Complaint. See Integrated Print Solutions, Inc. v. Kelly Davidson and Integrated Print Solutions, WIPO Case No. D2013-0219; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269.

Complainant owns at least one registration in the European Union for the VOLKSWAGEN trademark. Complainant owns at least one International Registration for VOLKSWAGEN with an extension into the United States of America, among other countries. Complainant owns at least one registration in Brazil for the VOLKSWAGEN trademark. Accordingly, Complainant has established rights in its VOLKSWAGEN trademark pursuant to Policy, paragraph 4(a)(i).

The addition of a generic Top-Level Domain (gTLD) suffix, such as ".surf" in this case, is typically disregarded and thus insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919 (the ".com" portion of the disputed domain name being disregarded when conducting the confusingly similar analysis); Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. 2016-2087 (adopting the same rationale).

In this case, the disputed domain name consists solely of Complainant's VOLKSWAGEN trademark combined with a gTLD (i.e., ".surf"). Accordingly, the disputed domain name (i.e., <volkswagen.surf>) is identical to Complainant's registered trademark (i.e., VOLKSWAGEN).

Complainant has proven the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words "volkswagen", or "surf" or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its VOLKSWAGEN trademark.

Complainant has provided unrebutted evidence showing that Respondent was maintaining an undeveloped website with pay-per-click links associated with the disputed domain name. Respondent's failure to develop a website corresponding to the disputed domain name with any original content (except for the pay-per-click links) is evidence supporting the conclusion that Respondent has no rights or legitimate interests in this domain name. See.Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; see also Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the VOLKSWAGEN trademark.

Respondent's awareness of the VOLKSWAGEN trademark can be inferred because Complainant's VOLKSWAGEN trademark is well-known in numerous jurisdictions, including the United States of America, the European Union and Brazil. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue"). Also, Complainant has alleged, and Respondent has not rebutted, that Respondent was aware of the rights owned by Complainant in VOLKSWAGEN when Respondent registered the disputed domain name.

Respondent's awareness of the VOLKSWAGEN trademark may also be inferred because the mark was registered prior to Respondent's registration of the disputed domain name and since the VOLKSWAGEN trademark is well known. The relevant priority date for all of Complainant's trademark registrations precede the date upon which the disputed domain name was registered (i.e., June 22, 2017). See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

Also, the Panel holds that Respondent is currently warehousing the disputed domain name and does not associate the disputed domain name with an active website, but rather, at the time of filing of the Complaint, was using the disputed domain name to point to an undeveloped website with pay-per-click links related to Complainant's business, possibly generating commercial gain to Respondent. This, in the Panel's view, is evidence of bad faith use for the purposes of the Policy.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

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.surf> be cancelled.

Gary J. Nelson
Sole Panelist
Date: December 13, 2017