WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Hui Min Wang, Wang Hui Min, 王慧敏

Case No. D2017-0860

1. The Parties

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

The Respondent is Hui Min Wang, Wang Hui Min, 王慧敏 of Taiyuan, Shanxi, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.ink> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2017. On April 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2017, 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. In response to a notification by the Center regarding one of the Annexes to the Complaint, the Complainant provided the updated Annex to the Complaint on May 4, 2017.

On May 2, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. Between May 2, 2017 and May 12, 2017, several emails were received from the Respondent requesting Chinese to be the language of the proceeding. On May 4, 2017, the Complainant confirmed its request that English be the language of the proceeding.

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 in both Chinese and English of the Complaint, and the proceedings commenced on May 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2017. The Response in Chinese was filed with the Center on May 26, 2017.

On June 2, 2017, the Center received the supplemental filing from the Complainant.

The Center appointed Sok Ling MOI as the sole panelist in this matter on June 7, 2017. 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 was founded in May 1937 and is one of the leading automobile manufacturers in the world. The Volkswagen Group owns 12 brands from seven European countries, namely, for Volkswagen passenger cars: Audi, SEAT, SKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati; and for Volkswagen commercial vehicles: Scania and MAN.

In the year 2014, the Volkswagen Group delivered over 10 million cars to customers, corresponding to what the Complainant says was a 12.9 market percent share of the world's passenger cars.

The Complainant owns numerous trade mark registrations (including in China where the Respondent is based) for its VOLKSWAGEN brand, including the following:

- International Registration Number 702679 registered on July 2, 1998, designating, inter alia, China;

- International Registration Number 835207 registered on January 21, 2004, designating, inter alia, China;

- European Union Trade Mark Number 009383506 registered on February 25, 2011.

The Complainant also owns numerous domain name registrations incorporating the VOLKSWAGEN trade mark including <volkswagen.com>, <volkswagen.org> and <vw.com>. The Complainant operates its main international website at "www.volkswagen.com" which contains information about its products and marketing activities.

The disputed domain name <volkswagen.ink> was registered on February 10, 2017, long after the Complainant had used and registered its trade mark VOLKSWAGEN. As at the date of this decision, the disputed domain name does not resolve to any active website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trade mark VOLKSWAGEN as it completely integrates the VOLKSWAGEN mark and adds the generic Top-Level Domain ("gTLD") ".ink".

The Complainant claims that its VOLKSWAGEN mark is globally well known and recognisable considering its long history, business activities and market presence in numerous countries. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant claims that the Respondent's main purpose of registering the disputed domain name was to mislead Internet users and exploit the reputation of the Complainant and its trade mark to divert consumer traffic to the Respondent's website. Noting that the website at the disputed domain name is inactive, the Complainant states that the Respondent's passive holding of the disputed domain name incorporating the Complainant's widely-known trade mark is in bad faith. The Complainant therefore contends that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Complainant requests for the cancellation of the disputed domain name.

B. Respondent

The Respondent contends that the ordinary meaning of the word "ink" in the gTLD dispels any likelihood of confusion with the Complainant given the different fields of business. She further contends that if the Complainant had found the disputed domain name to be confusingly similar to its trade mark, it should have registered the disputed domain name during the sunrise registration period for the new gTLD ".ink".

The Respondent contends that as she had registered the disputed domain name legally by paying the registration fee, she enjoys the prior right to the disputed domain name. The Respondent further claims that she had registered the disputed domain name only recently and that prior to receiving the Complaint, she was making preparations to set up a nonprofit website on environmental protection topics.

The Respondent claims that she had not registered the disputed domain name for the primary purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant; nor had she registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name since the Complainant had the opportunity to register the disputed domain name during the sunrise period. The Respondent further contends that there is no basis for saying that she had registered the disputed domain name primarily for the purpose of disrupting the business of a competitor since she is not a competitor of the Complainant and there is no evidence that she had not in any way disrupted the business of the Complainant.

The Respondent requests that the Panel finds that the Complaint's conduct amounts to reverse domain name hijacking.

6. Discussion and Findings

6.1 Procedural Issues

A. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding and has filed its Response in Chinese.

Although the Respondent appears to be a native Chinese individual and claims she has no knowledge of English beyond a couple of English terms, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name <volkswagen.ink> is registered in Latin characters, rather than Chinese script; and

(b) according to the reverse WhoIs search independently conducted by the Panel, the Respondent also owns other domain names (such as <donless.xyz>, <herosports.xyz>, <fivecardstud.xyz>, <5million.xyz>, <bankbazaar.loan>, <entrusted.loan>, <lendkey.loan>, <foxconn.life>, <sanyo.kim>, <oppo.space>, <vivo.space>, <seagate.online>, <petrochina.tech> and <philips.tech>) comprising Latin characters and words with ordinary English meaning; and

(c) in particular, amongst the 6,000 odd domain names owned by the Respondent, the Panel notes the uncanny pairing with a meaningful/relevant/descriptive gTLD, for example,"philips" with ".tech","entrusted" with ".loan" and "bankbazaar" with ".loan".

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present her case in this proceeding;

(c) the Center has provided the Respondent with a Model Response in Chinese for reference; and

(d) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) it shall accept the Response as filed in Chinese; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

B. Supplemental Filing

Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, and although the Rules do not expressly provide for unsolicited submissions, under paragraph 10(a) of the Rules, the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. This is the consensus view of previous UDRP panels.

A supplemental filing has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.6 as well as Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International IP, LLC v. Lin Qing Feng (林清枫); YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), WIPO Case No. D2015-0942.

On June 2, 2017, before the Panel was duly constituted, the Complainant made a Supplemental Filing to rebut the Respondent's claim of a lack of knowledge of English and other claims. Of significance, the Complainant provided further information of an earlier UDRP decision involving the Complainant and the Respondent where the Panel found that the Respondent was malicious in the registration and use of the domain name <volkswagen.live>. See Volkswagen AG v. Wang Hui Min, WIPO Case No. D2016-0586. The Complainant highlighted that as that decision was issued in Chinese, the Respondent cannot pretend to be unaware of the Complainant's trade mark.

Given that the Complainant's assertions are relevant and directly in response to the Respondent's claims, the Panel accepts the Supplemental Filing.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the VOLKSWAGEN mark by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant's trade mark VOLKSWAGEN in its entirety. The addition of the gTLD ".ink" does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.

Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to show its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) 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 trade mark or service mark at issue. (See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).

The Complainant has asserted that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the VOLKSWAGEN trade mark or register the disputed domain name. There is no resemblance between the Respondent's name and the term "Volkswagen". There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "Volkswagen".

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to demonstrate her rights or legitimate interests in the disputed domain name.

As at the date of the decision, the disputed domain name does not resolve to any active website. Save for claiming a right to the disputed domain name based simply on earlier registration and a bare assertion that she was making preparations to set up (and connect to the disputed domain name) a nonprofit website on environmental protection, the Respondent has failed to provide any evidence to demonstrate her rights or legitimate interests in the disputed domain name, and there appears to be no other evidence before the Panel that would do so.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent'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 Respondent's website or location or of a product or service on the Respondent's website or location.

The Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview 3.0, section 3.3.

The Complainant and its highly distinctive trade mark VOLKSWAGEN enjoy a strong worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the VOLKSWAGEN trade mark and its extensive use by the Complainant. There can be no doubt that the Respondent was aware of the Complainant's VOLKSWAGEN trade mark and related domain names when she registered the identical disputed domain name. Registration of a domain name that incorporates a complainant's long-established widely-known distinctive trade mark, with no connection to its owner and no legitimate purpose to use the domain name, suggests opportunistic bad faith.

The Respondent has failed to provide any evidence of actual or contemplated bona fide use of the disputed domain name. Given that the disputed domain name is identical with the Complainant's highly distinctive trade mark, the Panel agrees with the Complainant's claim that the Respondent has likely registered the disputed domain name with an aim to intentionally attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trade mark as to source, sponsorship, affiliation or endorsement of the Respondent's website.

The Panel notes that the Respondent did not respond to the Complainant's cease and desist letter of March 1, 2017 seeking the immediate cancellation of the disputed domain name. The Panel further notes that the Respondent has registered more than 6,000 other domain names, some of which consist of well known brands, such as <philips.tech>, <foxconn.life> and <seagate.online>, including <volkswagen.live>. There is therefore prima facie evidence that the Respondent is engaged in a pattern of cybersquatting and the inference is that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Respondent has failed to present any credible evidence-backed rationale for registering the disputed domain name.

In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent's registration and passive holding of the disputed domain name are done in bad faith within the meaning of the Policy.

Taking into account all the circumstances, it is appropriate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy. The Respondent's claim that the Complaint was brought in bad faith is unfounded.

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.ink> be cancelled.

Sok Ling MOI
Sole Panelist
Date: June 19, 2017