WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VOLKSWAGEN AG v. Danny de graaf

Case No. D2020-1940

1. The Parties

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

Respondent is Danny de graaf, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.kiwi> is registered with Melbourne IT Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2020, 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 Complainant on August 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 4, 2020.

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 Respondent of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2020.

The Center appointed Phillip V. Marano as the sole panelist in this matter on September 11, 2020. 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

Originally established in Germany in 1937, Complainant has grown to become one of the world’s largest automobile manufacturers and the largest carmaker in Europe, with key sales markets currently in Brazil, China, Mexico, Russia, the United States, and Western Europe. Complainant owns valid and subsisting registrations for the VOLKSWAGEN trademark in numerous regions and countries, including in New Zealand, with priority dating back to at least July 2, 1998. Complainant has provided evidence of its New Zealand trademark registration number 832559, registered October 29, 2010.

The disputed domain name was registered on November 25, 2019. At the time of this Complaint, the disputed domain name resolves to a registrar’s parking webpage that reads, “This Domain Is Parked, The owner of this domain has yet to point to a website or online content”. Complainant has provided evidence that it has sent a cease-and-desist letter through the Registrar to Respondent on June 30, 2020.

5. Parties’ Contentions

A. Complainant

Complainant asserts ownership of the VOLKSWAGEN trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including in New Zealand, with priority dating back to at least July 2, 1998.

The disputed domain name is confusingly similar to Complainant’s VOLKSWAGEN trademark, according to Complainant, because it incorporates the well-known VOLKSWAGEN trademark in its entirety, and the “.kiwi” generic Top-Level Domain (“gTLD”) is without any significance. Furthermore, prior UDRP panels have already found similar domain names, namely <volkswagen.online>, <volkswagen.video>, and <volkswagen.surf>, confusingly similar to Complainant’s VOLKSWAGEN trademark.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any license, permission, or connection between Complainant and Respondent; the lack of any evidence that Respondent is known by the name “Volkswagen”; and Respondent’s obvious aim to exploit the fame and reputation of Complainant’s VOLKSWAGEN trademark through registration and use of the disputed domain name.

Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the fame of the VOLKSWAGEN trademark, as established by several prior determinations under the Policy, makes it highly unlikely that Respondent would not have actual notice of Complainant’s trademark rights; the disputed domain name is so obviously connected to Complainant’s well-known VOLKSWAGEN trademark that Respondent’s opportunistic bad faith is evident; and Respondent’s passive holding of the disputed domain name since it was registered on November 25, 2019.

For the reasons described above, Complainant requests that the disputed domain name be cancelled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:

- The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;

- Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 ; The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the VOLKSWAGEN trademark has been registered in numerous regions and countries, including where Respondent is located in New Zealand, with priority dating back to at least July 2, 1998, nearly thirteen years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the VOLKSWAGEN trademark have been established pursuant to the first element of the Policy.

The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s VOLKSWAGEN trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s VOLKSWAGEN trademark because, disregarding the “.kiwi” gTLD, the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0 , section 1.7 . Such gTLDs, like “.kiwi” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 .

In view of Complainant’s registrations for the VOLKSWAGEN trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview , section 2.1 .

It is evident that Respondent, identified by registration data for the disputed domain name as “Danny de graaf”, is not commonly known by the disputed domain name or Complainant’s VOLKSWAGEN trademark.

Moreover, based on the undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, nor making a legitimate or fair use of the disputed domain name. This is especially the case where a disputed domain name is so obviously connected with a complainant, the very registration and use, or in this case, passive holding, by a registrant with no connection to a complainant suggests opportunistic bad faith. The Panel concludes from the record that Respondent had Complainant’s VOLKSWAGEN trademark in mind when registering the disputed domain name, and that Respondent most likely registered domain names in order exploit and profit from Complainant’s trademark rights.

In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, the obvious connection between the disputed domain name and Complainant’s VOLKSWAGEN trademark, and Respondent’s passive holding of the disputed domain name, the Panel concludes that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:

i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or

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

iii. 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Passively holding a domain name cannot prevent a finding of bad faith. WIPO Overview, section 3.3. This includes domain names that do not resolve to any website content as well as domain names that are parked with a “coming soon” message or other similar content like “This Domain Is Parked, the owner of this domain has yet to point to a website or online content”. Where a domain name is being passively held, as alleged in this case, bad faith registration and use exists where: (i) Complainant’s VOLKSWAGEN trademark has a strong reputation and is widely-known, making any good faith uses of the disputed domain name implausible; (ii) Respondent declined to respond or provide any evidence of actual or contemplated good‑faith use of the disputed domain name; and (iii) Respondent failed to acknowledge or reply to Complainant’s cease and desist letter. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”) To that end, the Panel acknowledges the multitude of prior panel determinations under the Policy cited by Complainant concluding that Complainant’s VOLKSWAGEN trademark is “well-known” and “famous”. See e.g., Volkswagen AG v. Tim Jevon, WIPO Case No. D2014-2155 (“Respondent’s registration of a domain name identical to Complainant’s famous house mark, and passive holding of such registration with neither use nor demonstrable plans to date to use it in a legitimate manner, constitute registration and use of the domain name in bad faith under the Policy”); Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191; Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780; Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498; Volkswagen Financial Services AG v. tangzhou, WIPO Case No. D2013-0574.

As mentioned above, Complainant also submitted ample evidence that Respondent failed to acknowledge or reply to Complainant’s cease and desist letter on June 30, 2020 prior to the filing of this Complaint. Accordingly, the Panel further concludes that failure by Respondent to answer Complainant’s cease and desist letter “suggests that Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.” See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 (internal citations omitted). See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003. Furthermore, the failure of Respondent to answer this Complaint or take any part in the present proceedings, in the view of the Panel, is another indication of bad faith on the part of Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

In view of the above, the Panel concludes that Complainant has established the third element 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.kiwi> be cancelled.

Phillip V. Marano
Sole Panelist
Date: September 29, 2020