WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Identity Protection Service, Identity Protect Limited / Andreas Born-Seiferle
Case No. D2018-0922
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 Identity Protection Service, Identity Protect Limited of Hayes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Andreas Born-Seiferle of Laufenburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <volkswagen.buzz> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2018. On April 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 4, 2018.
The Center verified that the Complaint together with the amendment to 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 May 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2018. On May 24, 2018, the Center received an email from the Respondent in German. On May 28, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Christian Schalk as the sole panelist in this matter on June 8, 2018. 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The Respondent has acknowledged receipt of the Complainant’s and the Center’s communication.
4. Factual Background
The Complainant was founded in 1937 and is today one of the leading car manufacturers in the world. Furthermore, the Complainant is also one of the most well-known companies in the world. In 2017, the number of vehicles delivered to customers around the world amounts to more than 10 million. Sale revenue of the Complainant’s group of companies was more than EUR 230 billion last year. The Complainant’s main brand is “Volkswagen”.
The Complainant owns a number of trademark rights in VOLKSWAGEN such as, for example
- EUTM No. 000703702 VOLKSWAGEN with priority date of December 12, 1997, registration date of May 10, 1999, covering goods and services in all 45 trademark classes;
- EUTM No. 093833506 VOLKSWAGEN with priority date of September 2, 2010, registration date of February 25, 2011, covering goods and services in all 45 trademark classes.
Several panelists of cases where the Complainant was party have found that the trademark VOLKSWAGEN is a well-known trademark both by virtue of its numerous trademark registrations around the world and as acquired through widespread use for over 75 years (see, for instance, Volkswagen AG v. Aram Baghdasaryan, WIPO Case No. D2015-0057; Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191; Volkswagen Financial Services AG v. tangzhou, WIPO Case No. D2013-0574 and Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780).
The Complainant owns more than one hundred of domain names which feature the term “Volkswagen”, such as <volkswagen.com>, <volkswagen.de>, <volkswagen.eu> and <volkswagen.org>.
The Respondent registered the disputed domain name on January 24, 2018. The disputed domain name resolves to an empty website where it is stated in German and English that this site is currently under construction.
The Complainant sent cease and desist letters to the Respondent on March 28, 2018 and on April 5, 2018 to which the Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant argues that since the disputed domain name completely integrates the term “Volkswagen”, there is enough evidence for assuming identity between the Complainant’s VOLKSWAGEN trademark and the disputed domain name. The Complainant cites in this context among others Volkswagen AG v. Pavel Siroky, Busch CZ s.r.o., WIPO Case No. D2015-2336 and Volkswagen AG v. Todd Garber, WIPO Case No. D2015-2175 to support this argument.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that he has neither licensed nor otherwise permitted the Respondent to use and of its trademarks or any variations thereof or to register or use any domain name incorporating any of these trademarks or any variations thereof. The Complainant adds further that the Respondent is neither connected with the Complainant nor with its subsidiaries.
The Complainant argues further that the Respondent is not commonly known by the disputed domain name. The Complainant believes also that the Respondent purposefully created the disputed domain name which consists of the Complainant’s famous mark VOLKSWAGEN in order to create the misleading impression of being in some way associated with the Complainant although that is not the case. Therefore, the Respondent was and is trying to exploit the fame and reputation of the Complainant’s trademarks. The Complainant is convinced that the possible reason for such behavior was to attract to the Respondent’s website Internet users looking for information on the Complainant and divert them from legitimate websites of the Complainant. For all this, the Complainant concludes that the Respondent had no legitimate reason for registering the Complainant’s trademark as a domain name and thus has registered and is using the disputed domain name illegitimately.
The Complainant contends furthermore, that the disputed domain name was registered in bad faith. The Complainant believes that the Respondent registered the disputed domain name in bad faith because at the time of its registration he must have been aware of the Complainant given the worldwide reputation of the Complainant.
The Complainant is also convinced that the Respondent uses the disputed domain name in bad faith. The Complainant argues in this context that the fact that the disputed domain name is passively held does not prejudge legitimate use of that domain rather such passive holding is deemed a bad faith indicator if the circumstances applying to this case are taken into account.
The Complainant states further that the reason why the Respondent registered the disputed domain name was to misleadingly divert the consumers to the website under the disputed domain, causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant. The Complainant refers in this context to the case Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 where the panelist found that opportunistic bad faith can be assessed where the domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.
Another indication of bad faith use of the disputed domain name is for the Complainant that the Respondent did not react to the two cease and desist letters of the Complainant and continued to use this domain name.
The Respondent states in his email of May 24, 2018, which has been written in German language and has been translated here into English language:
“Hello [Guten Tag],
I would like to answer in an official manner your correspondence, which has been signed from a Swiss company, written in English language by a person with Asian origin.
I do not know who you are and I do not care. I also do not know what you want.
However, THANK YOU, that you for congratulate me on this www address. The price for this domain name has been paid already some times ago to an HOST web shop (provider, examiner and releaser)!
Also, this website is not used by us, it just occupied ….. from us.
Please keep in mind: a letter which is directed to me, written in a foreign language, cannot and will not be answered in the future! Emails from suspect senders and sent from foreign countries and having unknown origin will remain in the SPAM folder and will be deleted without being read before.!
It is the same with any kind of telephone calls from abroad. They will neither be accepted nor answered. That is our rule.
Furthermore, your letter which we have found in a yellow DHL envelope in the garden has neither been accepted by us nor has its delivery be confirmed by us and thus has not been delivered to us in a correct manner.
It is unknown to me how you reached to my private and that will become an issue under German data privacy rules.
6. Discussion and Findings
A. Language of the Proceedings
The statement made by the Respondent on May 24, 2018 could be interpreted as the Respondent’s disagreement with English as a language of the proceedings.
The Panel decides that the language of the proceeding to be in English for the following reasons.
(a) Paragraph 11(a) of the Rules provides that “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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the registration agreement is English.
(b) Paragraph 10(c) of the Rules provides that “[T]he Panel shall ensure that the administrative proceeding takes place with due expedition. As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
(c) In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (see SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400).
(d) In the case at issue, this Panel considers that conducting the proceedings in English would not be disadvantageous to the Respondent. When the Respondent registered the disputed domain name, he had to agree that he accepts to the terms and conditions of the Registration Agreement which is written in English language. Therefore, the Panel believes that the Respondent has sufficient knowledge to follow and to contribute to the proceedings in English language.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the trademark VOLKSWAGEN. The disputed domain name is identical to the Complainant’s trademark VOLKSWAGEN.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The disputed domain name features the term “Volkswagen” in its entirety.
Furthermore, the generic Top-Level Domain (“gTLD”) “.buzz” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark VOLKSWAGEN in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com”, “.org” or, in this case, “.buzz”, may be disregarded when determining if there is identity or confusing similarity. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy (see Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946 and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”); Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.
Searches for the term “Volkswagen” in a search engine such as Google revealed only the Complainant’s business on the first pages. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and that the VOLKSWAGEN brand has been chosen by the Respondent in order to create an impression of an association with the Complainant (see also: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
That there is no active website at or associated with the disputed domain name cannot constitute a bona fide or legitimate use.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the 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 disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name. The Complainant’s Volkswagen cars are well-known, especially in Germany where the Respondent apparently lives. The Panel’s own searches in search engines such as Google or Bing showed only the Complainant and its business on its first pages.
Therefore, given the strong presence of the Complainant in daily life in Germany and many other countries of the world as well as the big media coverage of the Complainant in all types of online and offline media, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The disputed domain name was not resolving to an active website at the time of filing the complaint. However, it is the consensus view amongst UDRP panelists that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also section 3.3 of the WIPO Overview 3.0.).
In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith. Such circumstances include the strength and renown of the Complainant’s VOLKSWAGEN trademark and the Respondent’s reaction to the present proceedings. The Respondent stated that he would neither accept nor answer any correspondence from the Complainant and from the Center. The Panel believes that the only reason for this behavior is to obstruct the proceedings. Another indication of bad faith use is the fact that the Respondent neither replied to the cease and desist letter nor to the reminder he received a few weeks later.
The Panel finds for all these reasons that the disputed domain name was registered and is being used in bad faith.
The Complainant has therefore satisfied paragraph 4(a)(iii) 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.buzz>, be cancelled.
Date: June 25, 2018