The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Glenn Karlsson-Springare of Huddinge, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2013. On February 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2013, 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 February 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 14, 2013. 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 world famous motor manufacturer. Details of extensive trade mark registrations of the Complainant’s trade mark VOLKSWAGEN have been submitted to the Panel, together with details of the Complainant’s extensive motor manufacturing activities, which inter alia showed the Complainant’s turnover in 2011 as EUR 159,337 million.
The disputed domain name was registered on March 26, 2010. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its trade mark VOLKSWAGEN, as it merely adds the non-distinctive or descriptive term “concept” to its VOLKSWAGEN trade mark, and has drawn the Panel’s attention to two previous UDRP decisions, in both of which the Respondent in this case seems to appear as respondent, namely F. Porsche AG v. Glenn Stefan Karlsson-Springare,WIPO Case No. D2011-1727 and Volvo Trademark Holding AB v. Glenn Karlsson-Springare,WIPO Case No. D2012-0003, in which the mere addition of the term “concept” to the well-known trade mark of a motor manufacturer, PORSCHE and VOLVO respectively, was held to constitute confusing similarity between the motor manufacturer’s trade mark and the disputed domain name.
The Complainant alleges that there is no indication of the Respondent's use of, or 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, the disputed domain name being merely listed in a “parking” web site.
The Complainant also alleges that the Respondent is not commonly known by the names comprised in the disputed domain name, and that the Respondent has not been authorized to use the Complainant's trademark. Further, the Complainant alleges that the Respondent had full knowledge of its VOLKSWAGEN trade mark when registering the disputed domain name, and that its only intention in registering the disputed domain name was to gain profit by selling it to the Complainant, and has provided to the Panel evidence of the Respondent’s attempt to sell the disputed domain name to the Complainant.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith, in particular that the Respondent had full knowledge of its VOLKSWAGEN trade mark when registering the disputed domain name and that it attempted in bad faith to sell the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names of the Respondent be transferred to the Complainant or be cancelled:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
The Panel has no hesitation in recognizing VOLKSWAGEN as a well-known trade mark.
In the circumstances of the present case, the Panel follows the decisions of the panel in F. Porsche AG v. Glenn Stefan Karlsson-Springare, supra and Volvo Trademark Holding AB v. Glenn Karlsson-Springare, supra, and finds that the mere addition of the non-distinctive and descriptive element “concept” to the well-known VOLGSWAGEN trade mark for automobiles is insufficient to avoid a finding of confusing similarity between the Complainant’s trade mark and the disputed domain name, and that, accordingly, the Complainant has satisfied the test set out in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Where the respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that, in the case of a well-known mark, the finding that the Respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel considers that the circumstances of this case as outlined by the Complainant, in which, in its view, the Respondent’s registration of the disputed domain name must have been the result of pre-knowledge of the Complainant’s well-known trademark, and was, consequently, opportunistic, are such as to justify a finding that the disputed domain name was registered in bad faith.
The wording of paragraph 4(a)(iii) of the Policy requires, in the Panel’s opinion, also a consideration as to whether the disputed domain name is being used in bad faith.
The Panel accepts the Complainant’s view that the Respondent had full knowledge of the Complainant’s VOLKSWAGEN trade mark when registering the disputed domain name, and regards the Respondent’s attempt to sell the disputed domain name as clear evidence of use in bad faith. The Panel notes from the decisions in F. Porsche AG v. Glenn Stefan Karlsson-Springare, supra and Volvo Trademark Holding AB v. Glenn Karlsson-Springare, supra, that the Respondent seems to have engaged in a pattern of such behaviour. Accordingly, the Panel finds that the Complainant has satisfied the dual test of 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 disputed domain name, , be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: April 2, 2013
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