WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Shinichi Wanikawa

Case No. D2016-2238

1. The Parties

The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.

The Respondent is Shinichi Wanikawa of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.shop> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2016. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2016, 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. On November 7, 2016, the Center transmitted an email to the Parties in English and Japanese regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on November 8, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in English and Japanese, and the proceeding commenced on November 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2016.

The Center appointed Haig Oghigian as the sole panelist in this matter on December 15, 2016. 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

As there is no submission from the Respondent, in principle, the facts are taken from the Complaint and generally are accepted as true.

The Complainant was founded on May 28, 1937 and is one of the world's leading automobile manufacturers. In 2014, the Volkswagen Group delivered to customers approximately 10 million vehicles. The Volkswagen Group's sales revenue in 2014 totaled approximately EUR 202 billion, while profit after tax amounted to approximately EUR 11 billion. The Volkswagen Group comprises 12 brands: Volkswagen Passenger Cars, Audi, Seat, Skoda, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and Man.

The Complainant has owned numerous trademark rights for the VOLKSWAGEN mark for a long period of time all over the world, including Japan and Germany. According to the relevant trademark databases, a first VOLKSWAGEN trademark was registered in Germany in 1952 (Registration Number 621252) and in Japan in 1995 (Registration Number 3018310), at the latest. In Japan, the Complainant owns 5 registered VOLKSWAGEN trademarks, and the trademark registrations cover an extensive range of goods and services under the Nice classification.

The disputed domain name was registered on September 23, 2016 and currently resolves to an inactive website.

The Complainant sent to the Respondent a cease-and-desist letter on October 12, 2016 and a follow-up email on October 24, 2016. As at the date of this decision, the Respondent has not responded to this correspondence.

5. Parties' Contentions

A. Complainant

The Complainant requests transfer of the disputed domain name.

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's registered trademark VOLKSWAGEN. Considering long history, tradition and business activity of the Complainant, it should be underlined that the VOLKSWAGEN mark is globally well-known and recognizable, not only by the vehicles fans, but also by a wide range of consumers. The incorporation of a complainant's mark in full within a disputed domain name may be sufficient to establish confusing similarity between the mark and the disputed domain name, and the disputed domain name <volkswagen.shop> completely integrates the VOLKSWAGEN mark with the addition of the generic Top-Level Domain ("gTLD") ".shop". The addition of the gTLD ".shop" does not diminish the confusing similarity. The content of the website under the disputed domain name <volkswagen.shop> should be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register or use any domain name incorporating any of these marks. The Respondent registered the disputed domain name to create the misleading impression of being in some way associated with the Complainant and has tried to exploit the fame and reputation of the Complainant's trademark. The Complainant has demonstrated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and therefore the burden of production has shifted to the Respondent. None of the circumstances listed under paragraph 4(c) of the Policy is applicable in this case. The Respondent is making an illegitimate use of the disputed domain name with intent to misleadingly divert Internet users to his website.

The Complainant further claims that the disputed domain name was registered and is being used in bad faith. As decided in Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483, the fact that despite the cease-and-desist letter the Respondent continued to use the disputed domain name is evidence of bad faith. Given the worldwide reputation of the Complainant, it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. It is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and its trademarks. In relevant UDRP decisions, bad faith in registration and use of a disputed domain name was found on the basis of the fame of the complainant trademark and prior knowledge thereof. The Respondent is promoting the Registrar's business, and the disputed domain name was registered and is being used to attract for commercial gain Internet users searching the official website "www.volkswagen.com". UDRP panels indicated that passive holding of the disputed domain name does not prejudge a legitimate use, and rather such passive holding is deemed a bad faith indicator. Therefore the Respondent's passive holding of the disputed domain name is sufficient to constitute bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Although the language of the Registration Agreement for the disputed domain name is Japanese, the Complainant in its Complaint and its letter dated November 8, 2016 requests that the administrative proceeding be conducted in English.

Paragraph 11(a) of the Rules provides that in principle 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". There are a number of rulings by UDRP panels that paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition.

See for example General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334, and SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400.

Despite the Center's notification regarding the language of the proceeding to the Respondent in both Japanese and English on November 7, 2016, the Respondent made no objection regarding the language of the proceeding, nor did it submit any Response by the due date. The Panel notes that the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.

The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese, and further that English is a neutral language for both of the Parties and would not give the Complainant unfair advantage over the Respondent.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.

6.2 Substantive Matters

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is established that the addition of other descriptive and generic terms does not mitigate the confusing similarity between the disputed domain name and the complainants' trademark. See for example Cantor Fitzgerald Securities, Cantor Index Limited v. Mark Mark, Chen Xian Sheng/Whois Protect, WIPO Case No.D2014-0125, and J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126.

Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

The Panel notes that the Complainant has owned in numerous countries, including Japan and Germany, the trademark rights in the VOLKSWAGEN mark since a number of years before the registration of the disputed domain name. The Panel further finds that the disputed domain name <volkswagen.shop> reproduces the Complainant's trademark VOLKSWAGEN in its entirety, with the addition of the gTLD ".shop".

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii) of the Policy, the complainant must establish that the respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:

- Use of or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;

- An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

It is established that where the complainant successfully makes out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. See for example Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if the complainant makes out a prima facie case and the respondent enters no response. Id.

The Panel notes that no evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name, the VOLKSWAGEN mark, or any other mark confusingly similar thereto.

Annex E of the Complaint suggests that the website "www.volkswagen.shop", containing a link connecting to the Registrar's website, was previously used to advertise the Registrar. The Panel notes that except for the link and the advertisement, the website under the disputed domain name only showed statement "this domain name is obtained via Onamae.com" in Japanese language. The Panel further notes that as at the date of this decision the website under the disputed domain name is an inactive website, and that the Respondent has never submitted any response for the purposes of the proceeding. Therefore, in the absence of any response to the Complaint, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services.

The Panel also notes that there is no evidence to suggest that the Respondent has been or is commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademarks or service marks.

Accordingly, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name and therefore the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. The Respondent did not respond to the Complaint and therefore has failed to rebut the Complainant's prima facie showing.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the disputed domain name has been registered and is being used in bad faith. Although paragraph 4(b) lists 4 circumstances that are evidence of the registration and use of the disputed domain name in bad faith, these circumstances are illustrative only and bad faith may be found otherwise.

It is recognized in a number of UDRP cases that registration of a well-known trademark by the respondent with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.

See for example Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry- Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483.

In this case, the disputed domain name does not appear to have been used in an active way. In certain circumstances, passive holding of the disputed domain name may constitute bad faith. See for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

The Panel finds that the VOLKSWAGEN mark has acquired extensive international reputation in connection with automobiles and other numerous goods and services offered by the Complainant, and that the VOLKSWAGEN mark's reputation indicates that the Respondent was or should have been aware of the VOLKSWAGEN trademarks prior to registering the disputed domain name. See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517, and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Panel also notes that the disputed domain name reproduces the VOLKSWAGEN mark in its entirety, and that no evidence has been submitted that shows that the Respondent was in some way connected to the Complainant or was authorised by the Complainant to own or use the disputed domain name. As stated in 6.2 B above, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services. Further, the Panel notes that despite transmission of the cease-and-desist letter and the Complaint, the Respondent has never responded for the purposes of the proceeding. Accordingly, the Panel cannot conceive of any bona fide use that the Respondent could make of the disputed domain name.

Therefore, in the absence of any response to the Complaint, the Panel considers that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirement of 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 <volkswagen.shop> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: December 28, 2016