The Complainant is Volkswagen Aktiengesellschaft of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Muqadas Wattoo of Lahore, Pakistan. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 28, 2012, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2012.
On October 17, 2012, the Complainant filed a Supplemental Filing.
The Center appointed Dana Haviland as the sole panelist in this matter on October 31, 2012. 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. The Panel has reviewed and accepted the Complainant’s Supplemental Filing in accordance with paragraphs 10 and 12 of the Rules. 4. Factual Background
The Complainant, a German corporation, is one of the world’s leading automobile manufacturers, whose products have been marketed throughout the world under the trademark VOLKSWAGEN (the “VOLKSWAGEN mark”) for at least six decades. The Complainant is, by unit sales in 2011, the second largest carmaker in the world and the largest based in Europe. With the Complaint, it has submitted evidence of the many registered trademarks of its VOLKSWAGEN mark, including national, European Community, and international registrations, dating back to 1949.
The Volkswagen Multivan and Volkswagen Golf Plus are successful car models of the Complainant. The Complainant has also registered trademarks for its car models Multivan and Golf Plus, dating back to 1997 for the Volkswagen Multivan trademarks (the “MULTIVAN mark”) and to 2002 for the Volkswagen Golf Plus trademarks ( the “GOLF PLUS mark”), as evidenced in the Annexes to the Complaint.
The Respondent registered the Domain Names and with the Registrar in May 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Names are identical or confusingly similar to a registered trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Domain Names, and that the Respondent registered and used the Domain Names in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a descriptive term that does not negate the confusing similarity. See Las Vegas Sands, LLC v. Michael Silver, WIPO Case No. D2006-0979 (domain name confusingly similar to complainant’s SANDS mark); Playboy Enterprises International, Inc. v. Zaynel Demirtas,WIPO Case No. D2007-0768 ( domain name confusingly similar to complainant’s PLAYBOY mark).
In this case, the dominant part of each of the Respondent’s Domain Names is the Complainant’s VOLKSWAGEN mark, which has been recognized in other UDRP decisions as a famous mark. See, e.g., Volkswagen AG v. Milas Auto, WIPO Case No. DTV2006-0003; Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498. In Volkswagen AG v. NovaNIC, WIPO Case No. D2005-0142, the panel found that the Complainant has a “famous VOLKSWAGEN brand,” and in Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952, the panel noted that “Volkswagen AG is one of the world’s most famous manufacturers of vehicles popularly known under the trademark VOLKSWAGEN and also as VW”.
Each of the Domain Names also includes a descriptive term, either “multivan” or “golfplus”, so that the Respondent’s and Domain Names correspond exactly to the names of model designations of vehicles sold by the Complainant and include in their entirety not only the Complainant’s VOLKSWAGEN mark, but also either the Complainant’s MULTIVAN mark or its GOLF PLUS mark. These additional descriptive terms, being themselves identical to other registered trademarks related to the Complainant’s Volkswagen automobile products, do not negate, but instead reinforce the confusing similarity of the Domain Names to the Complainant’s VOLKSWAGEN mark as well as to the Complainant’s MULTIVAN and GOLF PLUS marks used in marketing those models. See Société Air France v. Nadine Schwab,WIPO Case No. D2008-1220 (descriptive words related to the complainant’s mark not only fail to distinguish the domain names in question from the mark, but also reinforce the association of those domain names with the complainant’s mark).
In Bayerische Motoren Werke AG v. Null,WIPO Case No. D2002-0937, the domain name in question - - incorporated two of the complainant’s trademarks, BMW and X5, BMW being the automobile manufacturer and X5 being one of the models of BMW cars. The panel observed that:
“In the present context, this combination of two marks in the same expression should deserve entirely the same type of protection that is envisaged for a single mark […] Furthermore, the domain name , where the expression ".com" has no significance in the context, corresponds exactly to the name of the model designation of a vehicle sold by the Complainant.”
It is well established that the generic top level domain, i.e., “.com,” is to be disregarded for the purpose of evaluating confusing similarity or identity. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim,WIPO Case No. D2011-0344; Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro,WIPO Case No. DTV2008-0001.
The Panel finds that both of the Domain Names are confusingly similar to the Complainant’s VOLKSWAGEN mark, that the Domain Name is also confusingly similar to the Complainant’s MULTIVAN mark, and that the Domain Name is also confusingly similar to the Complainant’s GOLF PLUS mark. The Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant alleges that the Respondent has no rights in either Domain Name, is not known by either of the Domain Names, and has not been permitted to use the Complainant’s VOLKSWAGEN, MULTIVAN or GOLF PLUS marks in the Domain Names or otherwise. The Complainant has searched and has not found that the Respondent has any registered trademarks or trademark applications corresponding to the Domain Names.
According to the allegations of the Complaint, there is no indication of Respondent’s use of, or demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, or with any noncommercial or fair use. On the contrary, the Complainant alleges that the Domain Names lead to active websites which include some general information about automobiles and which prominently provide advertisements as sponsored links on the websites, including links provided by the “Adsense” program from Google Inc., for which the Respondent receives fees and commissions. The Complainant further alleges that the sponsored links lead to several websites of other car manufacturers or businesses where competing products are offered for sale. The Complainant asserts, and the Panel agrees, that the Respondent’s use of the Domain Names for such sponsored advertising links is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638:
“[W]here Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger,WIPO Case No. D2003-0416.
The Respondent has not submitted a Response to the Complaint and has provided no evidence in opposition to the Complainant’s allegations or in support of any rights or interests described in the three above subparagraphs of paragraph 4(c) of the Policy, or any other right or interest in the Domain Name.
The Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.
In a Supplemental Filing, which the Panel has reviewed and accepted for inclusion in the record of this case, the Complainant has submitted a copy of a September 28, 2012 email from the Respondent, responding to a September 27, 2012 email from the Complainant notifying the Respondent of the filing of the Complaint that day and attaching a copy of the Complaint. In his email to the Complainant, the Respondent did not contest any allegations or submit any evidence in rebuttal of the Complaint, but merely offered to sell both the Domain Names for USD 500.
The Complainant has thus proffered evidence that the Respondent has offered to sell the Complainant the Domain Names for an amount in excess of the Respondent’s out-of-pocket costs directly related to the Domain Names. This evidence is sufficient to show that the Respondent registered the Domain Names primarily for the purpose of selling the Domain Name registrations to the Complainant, who is the owner of the trademarks incorporated in the Domain Names, for valuable consideration in excess of the Respondent’s out-of-pocket costs. See, e.g., The Richards Group, Inc. v. Click Here!, Inc.,WIPO Case No. D2000-0171. The Panel therefore finds that the Respondent has registered the Domain Names in bad faith, pursuant to paragraph 4(b)(i) of the Policy.
The Complainant has alleged and submitted unrebutted evidence that the Respondent has not only registered the Domain Names, but has also registered nearly 60 other domain names following the pattern of combining company names of famous automobile or motorcycle manufacturers with other trademarks reflecting the model designations of those manufacturers, e.g., , , and many others. According to the Complainant, the Respondent has registered these domain names under the name Muqadas Wattoo, always using the same contact details as for the Domain Names, and always using the “.com” domain name space. The Complainant has further shown that the appearance of the websites at these other automobile and motorcycle domain names is similar to the appearance of the Domain Name websites, including some general information about the automobile or motorcycle model in question and displaying numerous Google Adsense advertisements consisting of sponsored links to automobile or motorcycle related content.
The Complainant asserts that the registrations of the Domain Names and the numerous other multiple domain name registrations of famous car and motorcycle manufacturers were made by the Respondent in order to prevent the Complainant and other trademark owners from reflecting their trademarks in a corresponding domain name and to earn advertising revenue.
None of the Complainant’s allegations and evidence of this pattern of registering domain names reflecting trademarks of other car and motorcycle manufacturers has been contested or rebutted by the Respondent.
In Potomac Mills Limited Partnership v. Gambit Capital Management,WIPO Case No. D2000-0062, the panel noted that the respondent had not contested the complainant’s assertion that the respondent had registered many domain names identical or confusingly similar to trademarks of numerous third parties who, like the complainant, owned or operated shopping centers. The panel then held that “for the limited purpose of demonstrating that the [r]espondent’s conduct regarding the [c]omplainant is not an isolated event, but rather is part of a pattern of conduct in the sense of paragraph 4(b)(ii) of the Policy, [r]espondent has engaged in a pattern of conduct of registering domain names identical or confusingly similar to service marks of others in order to prevent the owners of such marks from registering corresponding domain names”, and transferred the domain name incorporating the complainant’s trademark to the complainant. See also ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002,WIPO Case No. D2000-0034, a case involving the registration of 13 domain names incorporating the WORLD CUP mark. (The panel held that “The ‘pattern of such conduct’ required by paragraph 4(b)(iii) is provided by the sheer volume of names registered”).
In view of the above, the Panel finds that the Complainant has shown that the Respondent has registered the Domain Names in order to prevent the Complainant from using its VOLKSWAGEN, MULTIVAN, and GOLF PLUS marks in corresponding domain names, and has further shown that the Respondent has engaged in a pattern of such conduct, by registering domain names incorporating the trademarks and automobile model names of many other automotive manufacturers, thus establishing bad faith registration and use of the Domain Names under paragraph 4(b)(ii) of the Policy.
The Complainant has submitted evidence that at the time of filing of the Complaint on September 27, 2012, the Domain Name websites were being used by the Respondent for commercial gain through sponsored links to third party websites, including websites of other car manufacturers in competition with the Complainant. This use of the Domain Names incorporating the Complainant’s VOLKSWAGEN, MULTIVAN and GOLF PLUS marks for advertising revenues from sponsored links constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Barclays Bank PLC v. Rico Martinez,WIPO Case No. D2010-1987; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd. WIPO Case No. D2009-1638; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
In conclusion, the Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the Domain Names under paragraphs 4(b)(i), (ii), and (iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) 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 Domain Names and be transferred to the Complainant.
Dana Haviland
Sole Panelist
Date: November 14, 2012
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