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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Jane Dew

Case No. D2020-0483

1. The Parties

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

The Respondent is Jane Dew, Cayman Islands.

2. The Domain Name and Registrar

The disputed domain name <docteur-dsg.com> is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2020, 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.

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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2020.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on April 4, 2020. 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 one of the world’s leading automobile manufacturers and one of the largest car makers in Europe. It developed and started to use in 2003 a direct-shift gearbox under the name and trademark “DSG”. Other generations of direct-shift gearboxes were developed over the years and incorporated in different cars manufactured by the Complainant. The Complainant has made a long and extensive use of its trademark DSG.

The Complainant is the owner of various registrations worldwide for the trademark DSG, including:

- United States trade mark registration No.76455216 registered on November 22, 2005;

- International registration No.715043 registered on May 18, 1999; and

- European Union trademark registration No.001017730 registered on May 30, 2000 in relation to goods and services of classes 7, 12 and 37.

The Respondent registered the disputed domain name on June 26, 2019.

The Respondent did not use the disputed domain name in connection to an active website.

The Complainant sent a cease and desist letter to the Respondent on November 18, 2019 and a follow-up reminder on December 5, 2019. The Respondent did not respond.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known DSG trademark as it reproduces it in full.

The Complainant has not licensed or otherwise permitted the Respondent to use the DSG mark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain name. According to the Complainant, the fact that the Respondent has not built any website since the registration of the disputed domain name in June 2019 as well as the fact that DSG is a characteristic abbreviation that cannot be used in any other context than in relation to the Complainant’s trademark further show a lack of legitimate interests on the part of the Respondent.

The Complainant alleges that the Respondent was aware of the DSG trademark before registering the disputed domain name. The Complainant further contends that the Respondent is passively holding the disputed domain name in bad faith, and that the Respondent has a pattern of conduct consisting of registering domain names which contain registered trademarks of other entities.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark 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 registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns various trademark registrations for the mark DSG.

The disputed domain name <docteur-dsg.com> reproduces the Complainant’s trademark in its entirety with no alteration, and combines this trademark with the descriptive term “docteur” (meaning “doctor” in French).

As a rule, UDRP panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0)).

In the present case, the trademark DSG is clearly recognizable in the disputed domain name. The mere addition of the descriptive term “docteur” does not change the overall impression produced by the disputed domain name and is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (See for example DEKRA e.V.v. Andrzej Potrac, WIPO Case No. D2015-1223).

UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.

The Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence does nothing to rebut such prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

Given the well-known character of the DSG trademark at least in the automobile area, the Panel finds it plausible that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name.

There is no indication that the Respondent made any use of the disputed domain name since its registration in June 26, 2019. In certain circumstances, panelists have held that passive holding of a domain name could amount to use in bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (section 3.3 of the WIPO Overview 3.0).

In the case at hand, the three first factors are present: the trademark DSG and particularly the parent company is well-known, the Respondent failed to submit a Response or to allege any actual or contemplated use, and the Respondent did not provide accurate contact details. Indeed, the DHL shipment of the Complaint could not be delivered.

With respect to the fourth factor, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain name, given the fact that the disputed domain name combines the Complainant’s trademark with a term which can evoke car repairing, and that there is no relationship between the Respondent and the Complainant. Such being the case, consumers could certainly mistakenly assume that an active website connected to the disputed domain name is operated or endorsed by the Complainant, when such is not the case.

As to the question whether the Respondent may have engaged into a pattern of registering domain names containing protected trademarks of third parties within the meaning of paragraph 4(b)(ii) of the Policy, the evidence provided by the Complainant is not sufficient to enable the Panel to reach a firm conclusion in this respect, as the Panel finds it difficult to identify which – and how many – domain names, in the (hardly legible) list submitted with the Complaint, reflect a protected trademark (as opposed to a non-protected term or combination of terms). The fact that the Respondent was involved in one other UDRP case (see Instagram LLC. v. Jane Dew, WIPO Case No. D2019-0708; <instagrambegenihilesi.org>) rather supports an inference of a pattern but is not conclusive in itself as registration of two domain names reflecting protected trademarks would not yet constitute a pattern. In any event, it is not necessary for the Panel to decide this issue, as the Panel finds, for the reasons set out above, that the passive holding of the disputed domain name amounts to use in bad faith given the circumstances of the case.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 <docteur-dsg.com> be transferred to the Complainant.

Anne-Virginie La Spada
Sole Panelist
Date: April 18, 2020

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