WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Pavel Siroky, Busch CZ s.r.o.

Case No. D2015-2336

1. The Parties

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

The Respondent is Pavel Siroky, Busch CZ s.r.o. of Olomouc, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.online> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 22, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2015, 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 January 11, 2016, the Center notified the Parties in both English and Czech that the language of the Registration Agreement in this case was Czech. The Complainant filed its request for English as the language of the proceeding on January 11, 2016. The Respondent did not submit a language of the proceeding request.

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 English and Czech of the Complaint, and the proceedings commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2016.

The Center appointed Ladislav Jakl as the sole panelist in this matter on February 18, 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

The Complainant was founded on May 28, 1937 and is one of the world's leading automobile manufacturers and the largest carmaker in Europe. In 2014 the Group increased the number of vehicles delivered to customers to 10.137 million, corresponding to a 12.9 percent share of the world passenger car market. In Western Europe, almost one in four new cars is made by the Volkswagen Group. The Volkswagen Group sales revenue in 2014 totaled EUR 202 billion, while profit after tax amounted to EUR 11.1 billion.

The Volkswagen Group comprises twelve brandsfromseven European countries: Volkswagen Passenger Cars, Audi, SEAT, ŠKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and MAN.

By virtue of registration, very long and extensive worldwide use of the VOLKSWAGEN trademark by the Complainant in relation to excellent quality of products and intensive publicity campaign organized by the Complainant, the trademarks VOLKSWAGEN have become exclusively associated with the Complainant and any products bearing the same or similar trademark will appear to the public as such products having emanated from the Complainant.

The Complainant is the owner of a series VOLKSWAGEN trademarks, for example: IR No. 702679 VOLKSWAGEN, registered on July 2, 1998 and designating inter alia the Czech Republic; CTM No. 000703702 VOLKSWAGEN, registered on May 10,.1999; and CTM No. 009383506 VOLKSWAGEN, registered on February 25, 2011.

The Complainant is the Registrant of a large number of domain names containing the VOLKSWAGEN trademark, both under generic and country code Top-Level Domains, in particular <volkswagen.com>, <volkswagen.org> or <vw.com> (Annex H to the Complaint).

The disputed domain name was registered on August 26, 2015 and resolves to the Registrar's parking page.

5. Parties' Contentions

A. Complainant

The Complainant alleges that the disputed domain name <volkswagen.online> is confusingly similar to the Complainant's trademarks VOLKSWAGEN as it contains term "Volkswagen" and the adjunction of the generic Top-Level Domain ("gTLD") "online" in the disputed domain name does not erase the strong similarity that exists with the prior trademarks of the Complainant (Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857; Nokia Group. v. Mr.Giannattasio Mario, WIPO Case No. D2002-0782; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; Quintessentially (UK) Limited v. Mark Schnorenberg/ Quintessentially Concierge, WIPO Case No. D2006-1643). For all these and others reasons the Complainant concludes that there is a confusing similarity between the VOLKSWAGEN trademark and the disputed domain name and so the first element required by the Policy is satisfied.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those trademarks or any variations thereof. Moreover the Respondent is in no way connected with the Complainant, nor with its subsidiaries and is not commonly known by the disputed domain name (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252); Kirkland & Ellis LLP v. DefaultData.com. American Distribution Systems, Inc., WIPO Case No. D2004-0136; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299). The Complainant concludes, that none of the circumstances listed under paragraph 4(c) of the Policy, demonstrating rights or legitimate interests, are given in the present case and that the Respondent is not authorized or related to the Complaint in any way and is making illegitimate use of the domain name with intent to misleadingly divert Internet users to his website.

Furthermore, the Complainant argues that the disputed domain name has been registered and is being used in bad faith, as its inactive use does not preclude a finding of bad faith under the Policy. The VOLKSWAGEN trademark is famous all over the world. The Respondent must have been aware of this fact when it deliberately registered the disputed domain name. The Complainant further argues that the Respondent, creating this domain name by using the well-known VOLKSWAGEN trademark, has registered it to intentionally mislead Internet users. The Respondent's obvious purpose was to misleadingly divert the consumers to the website under the disputed domain name, causing confusion among consumers by creating the impression of relation with or sponsorship or endorsement of the Respondent was to exploit the reputation of the Complainant and his trademarks. The Complainant further states, that in the recent similar cases, bad faith in registration and use of the disputed domain name was found on the basis of the prior knowledge of the Complainant´s trademarks (Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319). Registration of a well-known trademark by a party 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 (Société pour I'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085).

The Complainant argues that the Complainant sent to the Respondent a cease and desist letter and that the Respondent has never responded to this correspondence and that ignoring warning letters is evidence of bad faith (Nintendo of America, Inc. v. Garrett N. Holland et al, WIPO Case No. D2000-1483). Moreover as the website under the disputed domain name is inactive and the fact that the disputed domain name is held passively does not prejudge a legitimate use of that domain is deemed a bad faith indicator (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633); Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613).

Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered andto be using the disputed domain name in bad faith.

In accordance with paragraph 4(i) of the Policy, for the described reasons, the Complainant requests the Administrative Panel, appointed in this administrative proceeding, that the disputed domain name <volkswagen.online> be cancelled.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Language of the Proceeding

The language of the Registration Agreement is Czech. The Complaint was submitted in English and the Complainant requests that the language of proceedings be English and provides supporting arguments and evidence. The Respondent has not objected to the language of proceedings to be English. The Panel, taking into account the circumstances of this case and a number of recent panel decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836) decides that the language of the administrative proceedings will be English.

B. Identical or Confusingly Similar

In the Panel's assessment, there is no doubt that the disputed domain name <volkswagen.online> is identical to the Complainant's trademark VOLKSWAGEN as it contains term "Volkswagen" of the Complainant's trademark. The adjunction of the gTLD "online" in the disputed domain name is typically ignored (see Siemens AG v Gokhan Yagci, WIPO Case No. D2015-1690).

The Panel concludes that disputed domain name is identical to the Complainant's trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

C. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

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

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark 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 trademark or service mark at issue.

The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never authorized the Respondent to use its VOLKSWAGEN trademark. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of its trademarks or any variations thereof.

Moreover the Respondent is in no way connected with the Complainant, nor with its subsidiaries and is not commonly known by the disputed domain name (Document Technologies, Inc. v. International Electronic Communications, Inc., supra; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, supra); Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., supra; Monty and Pat Roberts, Inc. v. Bill Keith, supra). The Respondent uses this trademark to draw Internet users to its website by capitalizing on the association of the VOLKSWAGEN trademark with the Complainant's products (Telstra Corporation Limited v. Nuclear Marshmallows,supra; Philip Morris USA Inc. v. private, WIPO Case No. D2005-0790). In the Panel's view, the Respondent's use of the Complainant's trademark is clearly for the purpose of misleading consumers into believing that the Respondent is associated with the Complainant. The Respondent is not making a legitimate noncommercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Moreover, the Respondent cannot establish rights or legitimate interests in the disputed domain name, as it knew at the time of the registration that it could not make any actual use of the disputed domain name without tarnishing the Complainant's trademark. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the disputed domain name.

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

D. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith. These include:

(i) circumstances indicating that the Respondent 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 documented out-of-pocket costs directly related to the domain name.

(ii) the Respondent has registered the disputed 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 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 his 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 its website or of a product or service on that website or location.

The Complainant has asserted, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name. While the disputed domain name is currently inactive, the Complainant claims the Respondent has registered the disputed domain name in bad faith with an aim to intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant´s trademarks. The Respondent must have been aware of this fact when he deliberately registered the disputed domain name identical to the Complainant's mark. The Complainant further argues that the Respondent, creating this domain name by using the well-known VOLKSWAGEN trademark, has registered it to intentionally mislead Internet users. The Complainant claims the Respondent's obvious purpose was to misleadingly divert the 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 the Respondent was to exploit the reputation of the Complainant and its trademarks. Additionally, the Complainant asserts that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.

The registration and use of the disputed domain name, on the basis of the prior knowledge of the Complainant´s trademarks, is considered of bad faith (Edmunds.com, Inc. v. Ult. Search Inc., supra). The registration of a well-known trademark by a party, with no connection to its owner and no authorization and no legitimate purpose to use the trademark, is a strong indication of bad faith (Société pour I'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, supra).

Moreover as the website under the disputed domain name is parked by the Registrar promoting its services (akin to inactive) and the fact that the disputed domain name is held passively does not preclude a finding of bad faith under the present circumstances (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon,supra; Telstra Corporation Limited v. Nuclear Marshmallows, supra; eBay, Inc. v. Sunho Hong,supra); Forte Communications, Inc. v. Service for Life, supra).

For the above cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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.online> be cancelled.

Ladislav Jakl
Sole Panelist
Date: March 8, 2016