WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Andre Machado
Case No. D2020-2247
1. The Parties
Complainant is Volkswagen AG, Germany, represented by Gołębiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp. p., Poland.
Respondent is Andre Machado, Brazil.
2. The Domain Name and Registrar
The disputed domain name is <volkswagen.cam>, which is registered with AC Webconnecting N.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2020. On August 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 those in the Complaint. The Center sent an email communication to Complainant on August 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 31, 2020.1
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 Respondent of the Complaint, and the proceedings commenced on September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2020.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on October 20, 2020. This Panel finds that it was properly constituted. This 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 German company engaged in the production of vehicles.
Complainant has rights over the VOLKSWAGEN mark for which it holds, among others, International Trademark Registration No. 702679, registered on July 2, 1998, in classes 1 through 42; and the European Union Trademark Registration No. 0703702, registered on May 10, 1999, in classes 1 through 42. Complainant also has rights over the VOLKSWAGEN and design mark for which it holds the Brazilian Trademark Registration No. 002171511, registered on January 21, 1969, in national class 7.
The disputed domain name was registered on March 6, 2020. At the time the Complaint was filed the disputed domain name resolved to a website showing, among others, “Launch and Grow Your SaaS Business Successfully”, “Launch is a modern website template perfect for marketing your SaaS products”, “Product Demo Pricing FAQ’s Support”.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant was founded in 1937 and is one of the world’s leading automobile manufacturers and the largest carmaker in Europe. The Volkswagen Group is present in all relevant automotive markets around the world, having delivered 10,974,636 vehicles to customers worldwide in 2019. The key sales markets currently include Western Europe, China, the United States of America, Brazil, Russian Federation, and Mexico.
Complainant is the owner of many mark registrations and applications consisting of or containing the famous VOLKSWAGEN mark. By virtue of registration, very long and extensive worldwide use and intensive publicity campaign of the VOLKSWAGEN marks by Complainant, the VOLKSWAGEN marks have become exclusively associated with Complainant and any products bearing the same or similar mark will appeal to the public as such products having emanated from Complainant. The VOLKSWAGEN are internationally well-known marks. The well-known status of the VOLKSWAGEN mark has been already confirmed by WIPO Panel decisions. Complainant is also the registrant of a large number of domain names containing the VOLKSWAGEN mark, in particular <volkswagen.com> and <volkswagen.org>.
Complainant attempted to contact Respondent by sending a cease and desist letter to the Registrar’s e-mail address “[...]@domain.cam”, requesting the Registrar to forward the letter to the registrant or to provide Complainant with an e-mail address for the registrant. As at the day of filing the Complaint, Complainant did not receive any information whether the letter was forwarded to the registrant.
There is a confusing similarity between Complainant’s mark and the disputed domain name. The disputed domain name completely reflects the VOLKSWAGEN mark and adds the generic Top-Level Domain (“gTLD”) “.cam”. According to WIPO Panel decisions, the incorporation of a complainant’s mark in full within a disputed domain name may be sufficient to establish confusing similarity between such mark and the disputed domain name.
Complainant has not licensed or otherwise permitted Respondent to use any of its marks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. Respondent is in no way connected with Complainant or its subsidiaries, and Respondent is not commonly known by the disputed domain name. None of the circumstances listed under paragraph 4(c) of the Policy are given in the present case.
Respondent had no legitimate reason for registering Complainant’s mark as a domain name. Respondent has registered and is using the disputed domain name illegitimately. Respondent purposefully registered the disputed domain name to create the misleading impression of being in some way associated with Complainant, trying to exploit the fame and reputation of Complainant’s mark. The possible aim was to attract to Respondent’s website Internet users looking for information on Complainant and divert them from legitimate websites of Complainant.
Taking into account the worldwide reputation of Complainant and its VOLKSWAGEN marks, as well as the market presence of Complainant in numerous countries, it is highly unlikely that Respondent would not have had actual notice of Complainant’s mark rights at the time of registering the disputed domain name. Respondent must have been aware of the VOLKSWAGEN marks when Respondent deliberately registered the disputed domain name. Respondent’s obvious purpose was to misleadingly divert consumers to the website under the disputed domain name, causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of Respondent by Complainant. It is apparent that Respondent’s intent was to exploit the reputation of Complainant and its marks.
The fact that on a few occasions the antivirus system blocked the website under the disputed domain name from being opened and informed that phishing attacks may be conducted from that source also strongly indicates bad faith of Respondent. It is very possible that the disputed domain name was (or is going to be) used to lure into a dangerous website unaware consumers who are trying to access Complainant’s legitimate website, in order to conduct phishing attacks.
The disputed domain name was registered and is being used to attract for commercial gain Internet users searching for Complainant’s official website at “www.volkswagen.com”, or - alternatively - in order to prevent Complainant from reflecting its mark in a corresponding domain name.
Complainant requests that the disputed domain name be cancelled.
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”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the VOLKSWAGEN mark.
Since the addition of a gTLD (i.e., “.cam”) after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark (see section 1.11 of the WIPO Overview 3.0). Taking into account the aforesaid, it is clear that the disputed domain name reproduces in its entirety Complainant’s mark and therefore is identical to said mark.
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is uncontested that Complainant’s VOLKSWAGEN mark is well known internationally. Complainant contends that it has no relationship with Respondent, that Respondent is not authorized to use the VOLKSWAGEN mark or variations thereof, that Respondent is not commonly known by the disputed domain name, that the disputed domain name will result in its association with Complainant and its mark, and that Respondent is illegitimately using the disputed domain name. This Panel notes, from the screenshots of the website associated with the disputed domain name, that Respondent seems to commercially operate such website to feature some SaaS product applications. Even if such an operation might be based on a legitimate business, in the file there is no justification for Respondent to use Complainant’s mark in the disputed domain name and to benefit therefrom. 2 Moreover, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000‑1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Taking into consideration that the registration of Complainant’s VOLKSWAGEN mark preceded the registration of the disputed domain name by a number of years (including at Brazil where Respondent is domiciled as per the Registrar’s report), Complainant’s international presence and that such mark is internationally known, this Panel is of the view that Respondent must have been aware of the existence of Complainant and its mark at the time it obtained the registration of the disputed domain name.
Complainant provided screenshots of the website associated with the disputed domain name, from which it is clear that Respondent is using it for commercial purposes. It seems to this Panel that Respondent has sought to divert Internet traffic looking for Complainant in order to commercially benefit therefrom.
Where the registration and use of the corresponding mark preceded the registration of the disputed domain name by a number of years, where the disputed domain name incorporates another’s well-known mark in its entirety, without any distinguishing feature, where use of Complainant’s mark in the disputed domain name is without Complainant’s authorization, and where the website linked to the disputed domain name shows advertisements of some products or services, there is no doubt that Respondent has intentionally sought to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with Complainant and its VOLKSWAGEN mark.3
Thus the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate for its identity with, and with the intention to benefit from the reputation and goodwill of Complainant’s mark, which denotes bad faith.
In light of the above, this Panel finds that Complainant has 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, this Panel orders that the disputed domain name <volkswagen.cam> be cancelled.
Date: November 3, 2020
1 The original Complaint was filed against “SP, Brazil”. In the original Complaint, Complainant stated, “the Respondent in these administrative proceedings is unknown to the Complainant, because there are no registrant’s contact information, apart from province and country”. The amendment to the Complaint named Respondent, as per the information disclosed by the Registrar.
2 See Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd., WIPO Case No. D2014-0637: “the Panel finds the Respondent’s business model not to result in any rights or legitimate interests […] Respondent does not necessarily have to register the disputed domain name and other domain names consisting of well established trademarks to establish his service.” See Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145: “Respondent seems to base his claim that he has a legitimate interest in the disputed domain name because he has a ‘legitimate business purpose’ […] though his concept for a business may be legitimate, he cannot build his business on the back of another’s rights.”
3 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. In Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250, it was established: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”. See also DaimlerChrysler Corporation v. Web4COKK SRL Romania, WIPO Case No. DRO2006-0003: “The registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use”.