WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vierol AG v. Whois Protection
Case No. D2007-1078
1. The Parties
The Complainant is Vierol AG, Oldenburg, Germany, represented by Lovells, France.
The Respondent is Whois Protection, West Bay, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2007. On July 25, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On July 25, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2007.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on September 10, 2007. 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 is a supplier of car specific mechanical and electrical spare parts for German cars, founded in Rastede, Germany in 1977. By 2004 about 7000 different items were being supplied to its dealerships in 117 countries. The Complainant is the Registrant of the domain name and . The Complainant relies on its registered German trademark VIEROL, registration No. 39706636 filed in February 1977 in classes 1, 6, 7, 8, 9, 11, 12, and 17. The Complainant’s key brands are VEMO and VAICO and it has four registered German trademarks containing the term “vemo” and three containing “vaico”. The Complainant registered the disputed domain name in 1996, but accidentally lost it due to an administrative problem.
The Respondent acquired the disputed domain name on March 6, 2007. The Complainant by its lawyers wrote to the Respondent on June 15, 2007 seeking the transfer of the domain name to the Complainant but received no reply.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s trademark VIEROL. The letters “www” and “com” are not distinguishing.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s searches in relation to multiple jurisdictions have revealed no Community or International trademark rights of the Respondent in the mark VIEROL. The Respondent was never authorized or otherwise licensed or permitted by the Complainant to use any of its trademarks. The Respondent is in no way affiliated with the Complainant.
The Respondent cannot assert bona fide use of the disputed domain name. The disputed domain name currently resolves to a page with “click-through” links consisting of car related subjects and it is well established that such use of a domain name is not a bona fide offering of goods or services. To the Complainant’s knowledge there is no basis on which the Respondent could assert that it is commonly known by the disputed domain name. Since it is highly likely that the Respondent is earning “click through” payments the Respondent cannot claim non-commercial or fair use of the disputed domain name. Clicking on the hyperlinks on the website to which the domain name resolves takes Internet users to websites of the Complainant’s competitors, which clearly indicates the Respondent is using the disputed domain name to misleadingly divert consumers for commercial gain.
A reverse WHOIS search performed on the Respondent reveals over 8000 results of which some 100 appear to be infringing at first glance. Not all are actually registered by the Respondent itself, some being registered by three other entities. However, all have been registered using the Respondent’s email address and all four entities concerned (Whois Protection; Domain Admin Whois ID Theft Protection; Whois ID Theft Protection and Domain Administrator) are apparently based in the Cayman Islands. All four entities have had numerous complaints under the Policy brought against them, transfer being ordered in each case. The evidence suggests that the individuals behind the Respondent are professional cybersquatters on an industrial scale, this constituting a pattern of conduct for the purposes of paragraph 4(b)(ii) of the Policy.
It is highly likely that the Respondent is receiving commercial gains from “click through” links on the website to which the disputed domain name resolves, and the disputed domain name is thus being used in order to intentionally attract, for commercial gain, Internet users to the Respondent’s website 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 its website: see paragraph 4(b)(iv) of the Policy.
The term “vierol” is highly distinctive and it would be very difficult for the Respondent to maintain that it was unaware of the Complainant and its VIEROL mark at the time of the registration of the disputed domain name. Furthermore, pop-ups that appear when accessing “www.” refer to the Complainant’s key brands VEMO and VAICO. It is therefore indisputable that the Respondent is using the disputed domain name to profit from the Complainant’s goodwill.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates the Complainant’s trademark VIEROL.
The addition of the letters “www” and “com” have no distinguishing effect for present purposes.
The Panel finds that the disputed domain name is identical to the Complainant’s trademark VIEROL.
B. Rights or Legitimate Interests
The extensive searches relating to multiple jurisdictions conducted by the Complainant have revealed no trademark rights held by the Respondent in the term “vierol”. It is not apparent from the relevant WHOIS database information that the Respondent is in any way known by the disputed domain name. The Respondent has not been licensed or authorized by the Complainant to use the trademark or to register a domain name incorporating the trademark at issue.
The Respondent did not reply to the Complainant’s contentions and has thus presented no evidence to the Panel relating to any of the circumstances mentioned in paragraph 4(c) of the Policy. The disputed domain name has resolved to a website only displaying click-through hyperlinks to websites with automotive subject matter. Such use is not consistent with bona fide offering of goods or services by the Respondent, as has been repeatedly decided in domain name arbitration proceedings (see e.g. Skyline Displays, Inc v. Whois Protection, NAF Case No. FA070500098907 (June 25, 2007)).
It is highly likely that, as the Complainant asserts, the Respondents receives some commercial gain from the activation of click-through links by Internet users on the website to which the disputed domain name resolves. There is no evidence before the Panel of legitimate non-commercial or fair use.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The term “vierol” is highly distinctive and contrived, with no primary meaning in the English or German language. The Complainant has an extensive network of suppliers around the world and supplies around 7000 automotive products. Its turnover is considerable. It has used its trademark VIEROL, which is also its company name, since the 1970’s. It has registered and uses the domain names and in respect of the supply of goods under the brand names VEMO and VAICO.
Furthermore, the website to which the disputed domain name resolves, when accessed by the Complainant, caused pop-ups to appear displaying references to the VEMO and VAICO trademarks of the Complainant, further indicating the Respondent’s awareness of the Complainant’s rights to the VIEROL trademark, of the nature of its business and of its goodwill. The hyperlinks displayed on the website to which the disputed domain name resolves consist largely of automotive terms, and they link to other automotive suppliers, which further indicates the Respondent’s awareness of the nature of the Complainant’s business and the reputation that adheres to the trademark VIEROL.
The reverse WHOIS search performed by the Complainant reveals that the Respondent and three apparently associated entities (all with the same email address and physical addresses in the Cayman Islands) hold many domain names. A substantial number of these domain names appear on their face to infringe established third party trademark rights. There have also been numerous domain name cases brought against the Respondent and the other three entities resulting in the transfer of domain names to trademark owners. The Panel therefore accepts that the Respondent has engaged in a pattern of conduct as referred to in paragraph 4(b)(ii) of the Policy.
The Panel also accepts that it is highly likely that the Respondent has sought to obtain click-through fees in relation to the use of the hyperlinks on the website to which the disputed domain name resolves. The Respondent is apparently seeking to gain commercially from attracting Internet users to its website by reliance on the misleading impression that there is a connection between the Complainant and the website to which the disputed domain name resolves.
The Panel finds that the domain name is registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
WiIliam A. Van Caenegem
Sole Panelist
Dated: September 14, 2007
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