WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. 马占福 (zhanfu960416)

Case No. D2020-0677

1. The Parties

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

The Respondent is 马占福 (zhanfu960416), China.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.fun> 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 March 20, 2020. On March 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2020, 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 March 30, 2020 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 in English on April 2, 2020.

On March 30, 2020, 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 April 2, 2020. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 April 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 5, 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 a multinational company headquartered in Germany, founded in 1937 and operating in the automotive industry. The Complainant is one of the world’s largest car manufacturers and its shares are traded on the Frankfurt Stock Exchange, where it is a constituent of the Euro Stoxx 50 stock market index.

The Complainant provides evidence that it owns a trademark portfolio for VOLKSWAGEN, including international trademark registration number 702679, registered on July 2, 1998 and indicating, amongst others, China, and European Union trademark registration number 703702, registered on May 10, 1999. The Complainant also owns a portfolio of official domain names, such as <volkswagen.com> created on June 16, 1995, and <volkswagen.org>, created on June 5, 1997.

The disputed domain name was created on April 17, 2019. The Complainant submits evidence that the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical to its trademarks for VOLKSWAGEN, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademark is distinctive and used intensively since 1937, and submits company and marketing information as well as several prior UDRP decisions which have recognized that the Complainant’s trademark for VOLKSWAGEN is well known, see for instance Volkswagen AG v. Tim Jevon, WIPO Case No. D2014-2155. The Complainant particularly submits that that the Respondent is holding the disputed domain name passively, that there are no justifications for the use of its trademarks in the disputed domain name, contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.

The Complainant request that the disputed domain name be cancelled.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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 Chinese. Nevertheless, the Complainant filed its Complaint and the amendment to its Complaint in English, and requested that English be the language of the proceeding on April 2, 2020. The Respondent did not comment on the language of the proceeding and did not submit arguments on the merits in this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the disputed domain name is identical to the Complainant’s trademark; the fact that the disputed domain name is written in Latin letters and not in Chinese characters; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

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

(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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark VOLKSWAGEN based on its intensive use and registration of the same as a trademark.

Moreover, as to identity or confusing similarity with the Complainant’s trademark, the Panel notes that the disputed domain name only consists of the Complainant’s registered trademark VOLKSWAGEN. The applicable generic Top-Level Domain (“gTLD”) (“.fun” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Accordingly, the Panel rules that the disputed domain name is identical to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the evidence provided by the Complainant, the Panel notes that the disputed domain name has not been used, and it directs to an inactive webpage. The Panel finds that holding a domain name being identical to the Complainant’s trademark passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent.

Moreover, the nature of the disputed domain name carries a high risk of implied association with the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark in the disputed domain name to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, the Panel holds that the registration of the disputed domain name clearly targeted the Complainant’s well-known trademark, and was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in VOLKSWAGEN and used these extensively. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name has not been used and links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” The Panel has reviewed all elements of this case, and gives particular relevance to the fact that the disputed domain name is identical to the Complainant’s trademark and to the high degree of distinctiveness and fame of the Complainant’s trademark. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith (see in this sense also prior UDRP decisions such as Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245). On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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.fun> be cancelled.

Deanna Wong Wai Man
Sole Panelist
Date: May 15, 2020