WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Wojciech Motyka

Case No. D2020-2108

1. The Parties

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

The Respondent is Wojciech Motyka, Poland.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.best> is registered with OVH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2020. On August 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 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 the Complainant on August 12, 2020 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 amended Complaint on August 14, 2020.

The Center sent an email communication to the parties in English and Polish on August 12, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Polish. The Respondent submitted a request for Polish to be the language of the proceeding on August 13, 2020. The Complainant submitted a request for English to be the language of the proceeding on August 14, 2020.

The Center verified that the Complaint together with the amended 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 August 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. The Respondent did not submit a formal response. Accordingly, the Center notified the commencement of Panel Appointment on September 24, 2020.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 7, 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

The Complainant was founded in Germany in 1937 and is one of the world’s leading automobile manufacturers and the largest carmaker in Europe. The Complainant has been manufacturing all types of automobiles including passenger cars, apparatus for locomotion by land, parts thereof and fittings therefor.

The Complainant is the owner of, among others, the following trademark registrations:

- International Trademark registration No. 702679 for VOLKSWAGEN registered on July 2, 1998 to cover goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 39, 40, 41, and 42;

- European Union Trade Mark registration No. 9383506 for VOLKSWAGEN registered on February 25, 2011 to cover goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 29, 30, 31, 32, 33, 34, 38, 39, 40, 41, 42, 43, 44, and 45.

The Complainant owns many domain names including VOLKSWAGEN marks, i.e.: <volkswagen.com>, <volkswagen.org> and <vw.com>.

The disputed domain name was registered on March 16, 2019.

On June 30, 2020, the Complainant sent a cease and desist letter to the Registrar asking it to forward the letter to the Respondent.

As of August 10, 2020, the disputed domain name resolved to a website presenting advertisements of different car dealers. As of the date of this decision, the disputed domain name resolves to the advertisement of the Mitsubishi cars (https://www.mitsubishi.pl/oferta/wyprzedaz2020?utm_source=campaign&utm_medium=perfo_mailing_adplaner&utm_campaign=102020_wyprzedaz_2020).

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that <volkswagen.best> is confusingly similar to the VOLKSWAGEN trademark as the disputed domain name reproduces the trademark in its entirety. The Complainant emphasizes that VOLKSWAGEN is a well-known trademark. According to the Complainant, the generic Top-Level Domain (“gTLD”) suffix “.best” does not serve to distinguish the disputed domain name from the registered trademark.

Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. In order to justify the above, the Complainant explains that it 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 marks or any variations thereof. According to the Complainant, the Respondent is not using the disputed domain name with a purpose related to its generic or descriptive meaning. Furthermore, the Complainant contends that the Respondent is not commonly known by the disputed domain name.

Thirdly, the Complainant claims that disputed domain name was registered and has been used in bad faith. The Complainant asserts that the VOLKSWAGEN trademark is famous all over the world, thus the Respondent must have been aware of this fact when he deliberately registered the disputed domain name. According to the Complainant, the Respondent’s obvious purpose was to misleadingly divert 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 by it. The Complainant also contends that it has sent a cease and desist letter to the Respondent, however the Respondent has ignored it. Furthermore, the Complainant emphasizes that currently the website to which the disputed domain name resolves to is inactive which was deemed by previous UDRP cases as a bad faith indicator.

B. Respondent

The Respondent did not reply to the Complainant’s contentions on merits. He only claims that he has created the disputed domain name.

6. Discussion and Findings

(i) Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Polish. Paragraph 11(a) of the Rules provides that “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”.

The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that a need to translate the Complaint from English into Polish would result in substantial expenses and unduly delay of the arbitration proceeding.

The Panel notes that the Center notified the Respondent in both, English and Polish, and that it would accept a Response in either English or Polish. The Panel further notes that English is indeed very common all around the world. Moreover, the gTLD “.best” which is a part of the disputed domain name is in English which indicates that the Respondent understand English and address its domain name to English speaking audience.

The Respondent requested Polish to be language of the proceedings. He claims that conducting the proceedings in English would result in unfair advantage to the Complainant who is represented by Polish counsel. The Respondent also asked for counsel to represent him on pro bono basis. At the same time, the Respondent wrote his email in English.

Taking all the circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.

(ii) Merits of the Case

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

(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 the disputed domain name; and

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

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The Complainant holds many valid VOLKSWAGEN trademark registrations. The disputed domain name incorporates the Complainant’s VOLKSWAGEN trademark in its entirety. As stated by previous UDRP panels, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

In the Panel’s opinion, the gTLD suffix “.best” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Therefore, the Panel finds that the disputed domain name is identical to the VOLKSWAGEN mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See Danzas Holding AG, DHL Operations B.V.v.Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the VOLKSWAGEN mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has ignored the cease and desist letter sent by the Complainant’s representative, (e) the website the disputed domain name resolves is claimed to be inactive.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes the nature of the disputed domain name, consisting of the Complainant’s VOLKSWAGEN trademark with the gTLD “.best”, such composition may cause confusion of the Internet users who may easily link the disputed domain name to a website offering high quality goods produced by the Complainant.

The Panel concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Firstly, the VOLKSWAGEN mark was registered years before the disputed domain name. In the Panel’s opinion, the notoriety of use of the VOLKSWAGEN mark indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name. As concluded by other UDRP Panels: 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 (See 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; and Volkswagen AG v. Pavel Siroky, Busch CZ s.r.o., WIPO Case No. D2015-2336).

Secondly, the disputed domain name resolves to a website, containing advertisements for other car producers and dealers, which this Panel considers as further indication of the bad faith. The Respondent willfully exploits the goodwill of the Complainant’s mark for his own profits.

Therefore, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.

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.best> be cancelled.

Piotr Nowaczyk
Sole Panelist
Date: October 20, 2020