WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Domainmonster.com Privacy Service / Futurename
Case No. DQA2014-0002
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondents are Domainmonster.com Privacy Service (the “First Respondent”) / Futurename (the “Second Respondent”) of Paris, France, self-represented.
2. The Domain Name and Registrar
The disputed domain name <vw.qa> (the “Domain Name”) 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 December 11, 2014. On December 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2014, 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 December 19, 2014.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Qatar Domains Registry Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2015. The Response was filed with the Center on January 31, 2015. The Complainant filed a supplemental filing on February 9, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 17, 2015. 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 has been engaged in the design, engineering, manufacture, and distribution of motor cars as well as ancillary services for almost 80 years. The Complainant operates globally and is one of the largest car manufacturers in the world. In 2013, it supplied approximately 9.7 million motor cars and its worldwide revenue was approximately EUR 197 billion. It trades under and by reference to the name “Volkswagen” and the initials associated with that name “VW”. It is the registered proprietor of a number of trade mark registrations comprising the letters “VW” including, for example, CTM registration No. 001354216 registered on May 31, 2001 for VW (word) with respect to a wide range of goods and services. It is also the registered proprietor in Qatar of trade mark QA36604 registered on August 20, 2008, with respect to (amongst other things) vehicles. The filed evidence establishes that the Complainant has a high reputation and is extremely well-known, as is its “VW” trade mark. That is true on an international basis. Further details of the Complainant, its products and relevant figures can be found at its international website at “www.volkswagen.com”.
See discussion in section 6 below as to the date the Domain Name was registered. As of the date the Complaint was filed, and as at the date of this decision, the website address at the Domain Name redirects to a sub page at the “www.tumblr.com” website, which contains a YouTube movie (the contents of which appear to be a rock band performing). The Complainant’s representatives sent a cease-and-desist letter on October 1, 2014, to the First Respondent. In a reply to that letter the Second Respondent (who said it was acting on behalf of a client) denied infringing the Complainant’s rights but indicated it had previously offered the Domain Name to the Complainant and had received no reply. In subsequent correspondence the Second Respondent said its client had acquired a portfolio of 100 domain names for USD 1 million which equated to USD 10,000 per name but it was prepared to sell the Domain Name to the Complainant for USD 7,500.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Domain Name incorporates and is identical to its trade mark VW in which it clearly has rights. It is well established that the top level domain suffix, in this case the country code Top-Level Domain (“ccTLD”) “.qa” is to be ignored in assessing identity or similarity between a trademark and a domain name.
The Respondents have no rights or legitimate interests in the term “VW”. The VW trademark is so well-known internationally that the Respondents must have had it in mind when registering the Domain Name. The Respondents registered the Domain Name in bad faith to profit from the reputation of the Complainant.
The Respondents are neither a licensee nor an authorized agent of the Complainant nor have they been authorized by the Complainant to use the trade mark VW in the Domain Name.
The Domain Name was registered and is being used in bad faith. It must have been registered with the Complainant in mind and the offer to sell the Domain Name to the Claimant for USD 7,500 is clearly an offer to sell it for an amount greater than the Respondents’ out-of-pocket costs of acquisition, which itself is evidence of bad faith registration and use. In this respect, the Complainant disputes the Respondents’ account of having paid USD 1 million for a portfolio of 1,000 domain names, which it says is not credible.
The Respondents make the following points in their Response.
The Domain Name has never been commercially exploited and only ever used to redirect to a Tumblr page containing a video. This produced no revenue and has only had a very few views. No reference to the Complainant or its VW brand appear anywhere in this material.
The Domain Name was acquired when the Respondents purchased a portfolio of 1,000 domain names in August 2014. At the time the Respondents paid little attention to it. The Respondents say they paid USD 1 million for this portfolio and dispute the Complainant’s assertion that its statement in this regard that this price is not credible. They give as examples of other names in the portfolio the following, with what they say is their value: <colis.com> – USD 7,600, <though.com> – USD 59,000, <monnaie.fr> – EUR 10,000, <bons.com> – USD 12,000, <milkshake.net> – USD 4,000.
The Respondents agree that the trade mark VW is a well-known acronym for the Complainant but say there are other organisations that also have the same acronym. The examples they give are Verizon Wireless, Vera Wang, VoyeurWeb, Void Walker (World of Warcraft), VistaWay (Disney Group) and VolksWriter. They say that when they acquired the Domain Name they contacted all these companies offering to sell them the Domain Name but no one replied and that is why the Domain Name has not been used commercially since. They say as no one wanted the Domain Name they intend to use it for a project called “VieW, Questions and Answers.” They say this project has previously been associated with the domain name <ecole.fr> but they intend to change this.
They also say a two letter acronym cannot be the property of one organisation throughout the world, and that the acronym “VW” stands for many things. Examples they give include VieW, VeryWell, Virtual Worlds, Viet Nam War, Vintage Wine, Vapor-Ware, Vehicle Warrantly and Very Welcome.
The Respondents say their registration was not in bad faith as they never intended to harm the Complainant or its brand, and they offered the Complainant the opportunity to recover the Domain Name.
6. Discussion and Findings
So far as the Policy is concerned, the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the UDRP) as adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Panel will where appropriate apply principles that have been established in cases decided under the UDRP in determining this dispute.
As a preliminary issue, the Panel notes this is a case where one of the Respondents (Domainmonster.com Privacy Service) appears to be a privacy or proxy registration service while the other Respondent (Futurename) appears to be the substantive Respondent. The Panel in this case adopts the approach of most panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant.” Accordingly, this decision refers to both Respondents and where necessary to distinguish between them to the First Respondent (Domainmonster.com) or the Second Respondent (Futurename).
The Panel does not need to consider the admissibility of the Supplemental Filing lodged by the Complainant as it has been able to determine this case without needing to refer to its contents, none of which alter the Panel’s conclusion.
To succeed, in accordance with paragraph 5(a) of the Policy, the Complainant must satisfy the Panel in respect of the Domain Name that:
(i) the Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark VW. It is clear that the Complainant is the holder of numerous registrations for trade marks in respect of the term “VW” throughout the world. The filed evidence also establishes that the VW trade mark has grown to be very famous indeed and is used in respect of the Complainant’s motor car business which is carried on internationally on a huge scale and which is extremely well-known.
The Domain Name is identical to the VW trade mark. It is well-established that the top level suffix (in this case the ccTLD “.qa”) is to be ignored in performing this comparison and hence the Panel finds that the Domain Name is identical to the Complainant’s trade mark and the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
VW is in substance an abbreviation or acronym for the Complainant’s name and is its trade mark. The Respondent is not a licensee or franchisee of the Complainant.
Paragraph 5(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Domain Name or to use the VW trade mark. The Complainant has (prior) rights in the VW trade mark which precede the Respondents’ registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondents’ case in this regard rests on two contentions. The first is to say that there are other persons who could use the term VW to refer to themselves. The Respondents suggests Verizon Wireless, Vera Wang, VoyeurWeb, Void Walker (World of Warcraft), VistaWay (Disney Group) and VolksWriter as examples of such persons. The Respondents have not produced any further evidence explaining who such persons are or why they would have such rights or why that would assist the Respondents. It is not clear to the Panel that the Respondents claim in this regard is correct though each case would need to be assessed on its merits with the benefit of proper evidence. The Panel does not know what such evidence would comprise (and the Respondents have not provided any assistance in this regard) but it is perhaps easier to surmise that Vera Wang, (who the Panel understands is an international dress designer) might have a claim to a legitimate interest in using her own initials, but rather harder to see how that can be the case for “Void Walker” (who the Panel understands to be a type of character in the World of Warcraft game series). However the point does not matter as nowhere are the Respondents suggesting they themselves are any of these persons or acting on their behalf. As such nothing the Respondents have produced in this respect establishes a legitimate interest on the part of the Respondents themselves in the letters “VW”.
More generally, the Respondents suggest that the Complainant cannot own a two letter acronym and that there are many other references or meanings for that acronym. Were that to be correct, there might be some substance to this claim. However the examples the Respondents give are as follows: VeryWell, Virtual Worlds, Viet Nam War, Vintage Wine, Vapor-Ware, Vehicle Warranty and Very Welcome. The Respondents have not attempted to put in evidence any examples showing the acronym “VW” being used as a reference to any of these terms or as shorthand for any of these terms and the Panel finds the Respondents’ argument wholly unconvincing. Taking for example one of the terms the Respondents suggest, the Panel cannot recall or readily conceive of the Viet Nam War being referred to as “VW” in any sensible context that would be readily recognised by the public. If confirmation of this were required a Google search for either the terms “vietnam war vw” or “war vw” does not produce, as far as the Panel can see, even a single example of such usage. In fact, all of the examples produced by the Respondents seem to the Panel to indicate precisely the reverse of what the Respondents contend – namely that the two letter acronym “VW” is entirely associated with the Complainant and does not commonly have any wider usage referring to other unrelated matters. Again, if confirmation of this is required a Google search for “VW” produces results over many pages (the Panel reviewed the first 10 pages of results) all of which clearly refer to the Complainant or its products. These results include material generated directly by the Complainant as well as other legitimate references to the Complainant’s products (by, for example, motoring publications, third party motor dealers, and enthusiast clubs, and so on). The Panel accordingly concludes the Respondents have failed to show that the letters “VW” are widely used in relation to subject matter unconnected with the Complainant such that they can claim a legitimate interest in themselves using the letters. Accordingly the Panel finds that the Respondents have has no rights or legitimate interests in the letters “VW” and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered or Used in Bad Faith
In the present circumstances, the distinctive nature of the VW trade mark, and the evidence as to the extent of the reputation the Complainant enjoy in the VW trade mark, and the identity of the Domain Name to the VW trade mark, lead the Panel to conclude the registration must have been effected with the Complainant and its VW trade mark in mind. Was this registration or use in bad faith?
The history of the Domain Name requires some explanation. The Panel does not know when the Domain Name was first registered, or by whom. The WhoIs data provided by the Complainant as an annex to its Complaint simply shows that the record was last modified on August 12, 2014, and provides details of the First Respondent as the registrant. This does not show when the Domain Name was first registered or by whom, or when the Second Respondent (if it was not the original registrant) acquired it. However, the material provided by the Registrar which showed the Second Respondent as the actual registrant also stated that “The domain name was transferred into the current registrant’s account within our system on the 13th Dec 2013.” It also showed the expiry date of the Domain Name as December 21, 2014.
So far as the evidence is concerned, the Second Respondent first offered the Domain Name to the Complainant by an email sent on August 31, 2014, to an email address address for the Complainant reading as follows:
“To whom it may concern, We are a communication agency specialised on branding and naming. One of our client recently acquired a domain portfolio, not without difficulty, and we think that one of them could be interesting for you as part of the development of your activities, We would like to propose you the following domain name, before it’s auctioned: HTTP://WWW.VW.QA This domain name is open to offers. We thank you in advance for the attention given to our proposal and remain available for further information.”
This appears clearly an offer to sell the Domain Name on a commercial basis, failing which it would be auctioned. It is not clear to the Panel whether this email was actually received and no reply to it is present in the evidence. However the subsequent correspondence following the Complainant’s cease- and-desist letter (above) resulted in an offer from the Second respondent to sell the Domain Name for USD 7,500.
Given the original cost of registration of the Domain Name was likely to have been only a relatively few dollars, the clear and natural inference to be drawn from this correspondence is that the Domain Name was to be sold for a price higher than it had cost the Second Respondent (or its supposed client) to obtain it. This would also be consistent with the obvious commercial nature of the Second Respondent’s approach. As such this amounts to evidence of bad faith in accordance with paragraph 5(b)(i) of the Policy: “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
However the Respondents now say that they obtained the Domain Name when they purchased a portfolio of domain names for USD 1million in August 2014. The relevance of that assertion is that it enables the Respondents to say there was a “price per domain” of USD 10,000 and hence suggest their offer to sell the Domain Name for USD 7,500 was for less than they paid for it and hence the inference that paragraph 5b(i) applies is displaced. The question is whether the Respondents’ account of this transaction is to be accepted?
Having reviewed all the material available to it, the Panel, on the balance of probabilities, declines to accept this account from the Respondents. The Panel is conscious that proceedings under the Policy are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not, however, mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corrobative or third-party evidence. The Panel considers this to be such a case. This is for the following reasons:
- No evidence has been produced to substantiate this supposed transaction. This is despite the fact that the Complaint made very clear the Complainant did not consider the Respondents’ account to be true – e.g. “It is not credible that the respondent spent $1 million on a portfolio of domains” [emphasis present in original]. The Respondent has clearly understood this allegation as it repeats it in its Response and then simply states “About point V - C : ‘It is not credible that the Respondent spent [USD] $1 million for a portfolio of domains […]’ Well, this is our job, and the willingness of our clients. We are a branding agency, not a kind of cybersquatter.” That is simply not an adequate response to a very clear allegation, especially when the means to answer it properly must have been readily available if the account was true. It would have been very simple for the Respondents to have produced proper evidence showing the details of this transaction, exactly which names were comprised in the portfolio, and how much was actually paid, and by what means and so on.
- Similarly the Respondents have not even attempted to explain who the second Respondent is and how it had the resources to effect such a transaction.
- The supposed acquisition of the Domain Name in August 2014 is inconsistent with the information provided by the Registrar stating that the Domain Name was transferred to the Second Respondent’s account in December 2013.
- In relation to the supposed portfolio acquisition, the Respondents have only provided details of what they say are five other names in the portfolio – the Panel notes that all of these appear to be generic terms (<colis.com>, <though.com>, <monnaie.fr>, and <milkshake.net> – colis is French for “parcel” and monnaie is French for “currency”) and this limited information with the values the Respondents say apply to these names is simply not sufficient to suggest a figure of USD 1 million or anything like it was an appropriate valuation for the entire portfolio.
- The Second Respondent claimed in correspondence with the Complainant to be acting on behalf of a client, which it did not identify. It now appears that no such client exists.
- The Panel has also reviewed the Second Respondent’s website at “www.future.name”. This simply comprises a single page with the wording “Future.Name. We are an expert agency specialized [sic] in naming and branding. We are located in USA (NYC) and Europe (Paris). Because we take great care of our patners [sic] and clients our website is not yet available. Enjoy this awesome splashpage and feel free to contact us whenever you need to.” The web page then has the word “clients” and the logos of four organisations - Square, Google, Microsoft and Renault. The rudimentary nature of this page, the lack of any substantive content and the grammatical/spelling mistakes cast further doubt on the veracity of the Respondents’ explanation.
- The Panel does not consider that the Respondents now claimed intention to use the Domain Name for a project called “VieW, Questions and Answers” alters this position – no real details of this project have been provided. The Respondents say they will use the Domain Name instead of <ecole.fr>, but as at the date of this decision attempting to access a website at “www.ecole.fr” simply redirects to the same Tumblr page as previously discussed. No explanation has been provided by the Respondents of what this supposed project is or how it relates to the Second Respondent’s business. The Panel doubts it exists and discounts it.
As a result, the Panel considers that the offer by the Second Respondent to sell the Domain Name to the Complainant was an offer to sell it for more than the Respondents’ documented out-of-pocket costs and is evidence of the Domain Name having been used in bad faith. Under the Policy use in bad faith suffices to satisfy the third condition of paragraph 5(a) of the Policy which has therefore been fulfilled in respect of the Domain Name.
For the foregoing reasons, in accordance paragraphs 5(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <vw.qa> be transferred to the Complainant.
Nick J. Gardner
Date: March 2, 2015