WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Whois Agent, Domain Protection Services, Inc. / Elena Tereshko

Case No. D2017-0461

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 Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America ("United States") / Elena Tereshko of Moscow, the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.click> (the "Disputed Domain Name") is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2017 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 March 9, 2017.

The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2017.

The Center appointed Peter Wild as the sole panelist in this matter on April 18, 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 owns a large number of trademarks for VOLKSWAGEN in various countries, jurisdictions and classes, including class 28, e.g., International registration number 702679 (registered on July 2, 1998) which designates in several countries, including Russia. The Complainant is active and well-known as one of the world's largest manufacturer of motor vehicles. "www.volkswagen.com" is its main Internet address and it owns and uses a wide range of domain names containing the term "Volkswagen".

The Disputed Domain Name was registered on November 13, 2016. The Disputed Domain Name used to resolve to a website appearing to offer car part products for sale. It also displayed advertising for various goods or services. It no longer resolves to an active page.

5. Parties' Contentions

A. Complainant

The Complainant contends that it is the owner of a number of trademarks consisting of the element "Volkswagen" and that it has worldwide reputation and fame for the products under this trademark. It has a strong presence on the Internet, with its main website at "www.tvolkswagen.com". The Complainant asserts that the Disputed Domain Name <volkswagen.click> is confusingly similar to the above mentioned VOLKSWAGEN trademarks. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name which was registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns registered rights in the trademark VOLKSWAGEN. This trademark is fully integrated in the Disputed Domain Name. It stands prominently at the beginning of the Disputed Domain Name and is followed by the generic Top-Level Domain ("gTLD") ".click". A gTLD is typically ignored when assessing confusing similarity and therefore the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Respondent is not known under the Disputed Domain Name and claims no connection with or authorization from the Complainant. It is unclear whether the goods which were offered for sale on the website under the Disputed Domain Name are goods which were produced by the Complainant or whether they are third-party goods. From the submitted evidence, it is apparent that the goods are at least not new nor in good condition. As the Panel finds, this factual question has no influence on the issue of rights or legitimate interests. Should the goods offered be from a third party, no legitimate interest can be derived. Should they be the Complainant's products and the Respondent is considered as a (non-authorized) reseller, the established Oki Data principles must be applied, according to which a reseller or distributor can only be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). These requirements include, inter alia, the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The fulfillment of the second point above is unclear, and the third point is not fulfilled in the Panel's assessment.

The Complainant sent a cease-and-desist letter on January 4, 2017 and a reminder on January 19, 2017. Both remained unanswered.

In the absence of any explanation by the Respondent, the Complainant's establishment of the prima facie case is sufficient.

With the evidence on file, this Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Disputed Domain Name used to direct Internet user to a website on which various used car parts were offered for sale. On that website, low quality pictures of such goods can be found, together with indication of the name of car models which are produced, e.g., "Passat". Taking into account the notoriety of the Complainant's trademark VOLKSWAGEN, which was confirmed by a number of previous UDRP panels in recent UDRP cases (Volkswagen AG v. Pavel Siroky, Busch CZ s.r.o., WIPO Case No. D2015-2336; Volkswagen AG v. Aram Baghdasharyan, WIPO Case No. D2015-0057) and the Respondent's use of the Disputed Domain Name, the Panel is convinced that the Respondent was and is aware of the Complainant's trademark. In this Panel's view this establishes bad faith registration of the Disputed Domain Name.

Using a well-known trademark in a domain name which refers to the complainant's products will attract Internet users who are interested in the complainant's products. This is especially so where the domain name is identical to the complainant's mark. This in turn may, among other commercial benefits, generate traffic to the website the domain name resolves to. The use of the Complainant's trademark in the Disputed Domain Name and the linked website must therefore be seen as the Respondent's intentional attempt to attract, for commercial gain, Internet users to its website, 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 (paragraph 4(b)(iv) of the Policy). This establishes bad faith use of the Disputed Domain Name.

This Panel therefore comes to the conclusion that the third element of the Policy is met.

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.click> be cancelled.

Peter Wild
Sole Panelist
Date: May 2, 2017