WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Torbay Camper Conversions Ltd / Roger Pattie
Case No. D2014-0120
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Torbay Camper Conversions Ltd and/or Roger Pattie of the United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Names and Registrars
The disputed domain name <volkswagencalifornia.com> is registered with Tucows Inc. The disputed domain names <volkswagenmotorhomes.com> and <vw-california.com> are registered with Easyspace.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2014. On January 27, 2014, the Center transmitted by email to the registrars Tucows and Easyspace a request for registrar verification in connection with the disputed domain names. On February 27, 2014, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 28, 2014, Easyspace transmitted by email to the Center its verification response also 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2014.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 28, 2014. 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, a German corporation, is one of the world’s leading automobile manufacturers, whose products have been marketed throughout the world under the trademark VOLKSWAGEN for at least six decades.
With the Complaint, it has submitted evidence of the many registered trademarks of its VOLKSWAGEN and VW marks, including national, European Community, and international registrations.
The Complainant has also registered trademarks for its car model CALIFORNIA, dating back to 1999.
The disputed domain names <vw-california.com>, <volkswagencalifornia.com>, and <volkswagenmotorhomes.com> were created on April 1, 2006, March 30, 2006, April 2, 2006, respectively.
5. Parties’ Contentions
The Complainant asserts that the disputed domain names are identical or confusingly similar to its registered trademarks VW, VOLKSWAGEN and CALIFORNIA in which it has rights.
The Complainant states that the Volkswagen or VW brands are among the most famous brands in the world and have a substantial recognition and reputation internationally.
The Complainant also argues that that the Respondents have no rights or legitimate interests in the disputed domain names, and that the Respondents registered and used the disputed domain names in bad faith. The Complainant requests transfer of the disputed domain names.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondents´ domain names:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondents have no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In this case, the dominant part of each of the disputed domain names is the Complainant’s VOLKSWAGEN and VW marks, which have been recognized in other UDRP decisions as a famous mark. See, e.g., Volkswagen AG v. Milas Auto, WIPO Case No. DTV2006-0003; Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498. In Volkswagen AG v. NovaNIC, WIPO Case No. D2005-0142, the panel found that the Complainant has a “famous VOLKSWAGEN brand,” and in Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952, the panel noted that “Volkswagen AG is one of the world’s most famous manufacturers of vehicles popularly known under the trademark VOLKSWAGEN and also as VW”.
The disputed domain names combine three elements: (i) Complainant’s mark VW or VOLKSWAGEN, (ii) Complainant’s trademark and model designation CALIFORNIA or the descriptive term “motorhomes” and (iii) the suffix “.com”.
The Panel finds that the disputed domain names <vw-california.com> and <volkswagencalifornia.com> are composed exactly of two trademarks registered by the Complainant, which are VW or VOLKSWAGEN and CALIFORNIA.
In Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937, the domain name in question - <bmwx5.com> - incorporated two of the complainant’s trademarks, BMW and X5, BMW being the automobile manufacturer and X5 being one of the models of BMW cars. The panel observed that:
“In the present context, this combination of two marks in the same expression should deserve entirely the same type of protection that is envisaged for a single mark […] Furthermore, the domain name <bmwx5.com>, where the expression ".com" has no significance in the context, corresponds exactly to the name of the model designation of a vehicle sold by the Complainant.”
It is well established that the generic top level domain, i.e., “.com,” is to be disregarded for the purpose of evaluating confusing similarity or identity. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim, WIPO Case No. D2011-0344; Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro, WIPO Case No. DTV2008-0001.
Regarding the disputed domain name <volkswagenmotohomes.com>, the Panel also finds that it fully incorporates Complainant’s trademark VOLKSWAGEN which, as mentioned above, has been recognized in other UDRP decisions as a famous mark, with a mere adding of the descriptive term “motorhomes”.
Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a descriptive term that does not negate the confusing similarity. See Las Vegas Sands, LLC v. Michael Silver, WIPO Case No. D2006-0979 (domain name <sandshotelmacao.com> confusingly similar to complainant’s SANDS mark); Playboy Enterprises International, Inc. v. Zaynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com> domain name confusingly similar to complainant’s PLAYBOY mark).
Therefore, the Panel finds that all three disputed domain names are confusingly similar to at least one of the Complainant’s VOLKSWAGEN and VW marks and that both of the disputed domain names, <vw‑california.com> and <volkswagencalifornia.com>, are also confusingly similar to the Complainant’s CALIFORNIA mark. The Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark 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 trademark or service mark at issue.
The Panel finds that the disputed domain names automatically redirect the traffic to its “www.camperconversions.com” website, where it offers VOLKSWAGEN campervan conversions and used campervans, as well as campervans from competitors of Complainant.
In light of this and due to the fact that Respondents are in the automobile business, the Panel agrees that Respondents registered and have used the disputed domain names only to generate traffic on the “www.camperconversion.com” website.
The Complainant alleges that the Respondents have no rights in the disputed domain names, is not known by the disputed domain names, and have not been permitted to use the Complainant’s marks in the disputed domain names or otherwise.
The Panel finds that there is no indication of Respondents’ use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, or with any noncommercial or fair use.
“Where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416.
The Respondents have not submitted a Response to the Complaint and have provided no evidence in opposition to the Complainant’s allegations or in support of any rights or interests described in the three above subparagraphs of paragraph 4(c) of the Policy, or any other right or interest in the disputed domain names.
The Panel finds that the Respondents do not have any rights or legitimate interests in the disputed domain names, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.
The Respondents have not only registered the disputed domain names, but also registered numerous other domain names, e.g., <fiatmotorhomes.com>, <fiatmotorhomes.co.uk>, <volkswagenmotorhomes.co.uk>, <mercedesmotorhomes.com>, <mercedesmotorhomes.co.uk>, <renaultmotorhomes.com> etc., following a pattern of combining either company names of famous automobile manufactures with the descriptive term “motorhomes” and, on the other hand, combinations of the trademarks VW or VOLKSWAGEN and CALIFORNIA with different top level domains such as <volkswagencalifornia.co.uk>, <vwcalifornia.tel>, <vw-california.co.uk> and <vwcalifornia.info>.
Almost all of the above-mentioned domain names forward to the Respondent’s website at “www.camperconversion.com”.
The Panel agrees that given the reputation of the Complainant’s trademarks, it is highly difficult to interpret Respondents use of the disputed names as anything other than as an attempt to profit by the deliberate diversion of internet users seeking to acquire used automobile-models of Complainant, particularly motorhomes such as the Volkswagen California (see also Volkswagen AG v. Zigoumis, Constantine, WIPO Case No. D2008‑0755).
The Panel finds that the Respondents registrations and use of the disputed domain names constitutes use in bad faith within the meaning of UDRP Sections 4(b)(iii).
The Panel also agrees that in accordance with paragraph 4(b)(iv) of the Policy the use of the disputed domain names with the intent to attract internet users to the website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks shall constitute evidence of registration and use in bad faith (see e.g. Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557).
Many previous UDRP panels have found that registration of a well-known trademark as a domain name is an indication of bad faith in itself (see for example, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka 21 Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435; PepsiCo, Inc. v. PEPSI, SRL and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696; Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett WIPO Case No. D2008-1053).
The Panel understands that the Complainant has sent a cease and desist letter to the e-mail-address of Torbay Camper Conversions Ltd on October 31, 2013, which was not replied.
None of the Complainant’s allegations and evidence of this pattern of registering domain names utilizing the trademarks of various other car manufacturers has been contested or rebutted by the Respondents.
In Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO Case No. D2000-0062, the panel noted that the respondent had not contested the complainant’s assertion that the respondent had registered many domain names identical or confusingly similar to trademarks of numerous third parties who, like the complainant, owned or operated shopping centers. The panel then held that “for the limited purpose of demonstrating that the [r]espondent’s conduct regarding the [c]omplainant is not an isolated event, but rather is part of a pattern of conduct in the sense of paragraph 4(b)(ii) of the Policy, [r]espondent has engaged in a pattern of conduct of registering domain names identical or confusingly similar to service marks of others in order to prevent the owners of such marks from registering corresponding domain names”, and transferred the domain name incorporating the complainant’s trademark to the complainant. See also ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034, a case involving the registration of 13 domain names incorporating the WORLD CUP mark where the panel held that ,“The ‘pattern of such conduct’ required by paragraph 4(b)(iii) is provided by the sheer volume of names registered”.
In light of the above, the Panel finds that the Complainant has shown that the Respondents have registered the disputed domain names in order to prevent the Complainant from using its marks in corresponding domain names, and have further shown that the Respondents have engaged in a pattern of such conduct, by registering domain names incorporating the trademarks and automobile model names of many other automotive manufacturers, thus establishing bad faith registration and use of the disputed domain names under paragraph 4(b)(ii) of the Policy.
The Panel concludes that the Complainant has therefore satisfied the third element of its claim under 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 names, <volkswagencalifornia.com>, <volkswagenmotorhomes.com> and <vw-california.com> be transferred to the Complainant.
Date: March 29, 2014