Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 16, 2013.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 27, 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
Complainant is a famous automotive manufacturing company headquartered in Wolfsburg, Germany. Complainant started its activities in 1938, already utilizing the VOLKSWAGEN/VW trademark.
Complainant is currently a leading company worldwide in the automobile manufacturing field, being the owner of more than 30 (thirty) trademark registrations for VW in several countries and in different classes, as per Annex 4 of the Complaint. Complainant is also owner of the domain name .
The present dispute concerns the domain name registered by Respondent on October 5, 2004. 5. Parties’ Contentions A. Complainant
Complainant designs, engineers, manufactures and distributes passenger cars, commercial vehicles, engines and turbo machinery, and offers related services including financing, leasing and fleet management.
Complainant contends that the VOLKSWAGEN or VW trademark is one of the most famous brands in the world and has a substantial recognition and reputation internationally.
Complainant’s economic group operates 99 production plants in 18 European countries and a further nine countries in the Americas, Asia and Africa. Approximately 501,000 employees work worldwide for Complainant’s Group and produce each working day 34,500 vehicles worldwide. The Volkswagen Group sells its vehicles in 153 countries and all of these vehicles carry the VW trademark in its front and back.
In the year of 2012, Complainant was listed number 12 of the world´s largest corporations in the ranking of the Fortune Global 500, which is an annual ranking of the top 500 corporations worldwide as measured by revenue.
Complainant argues that the disputed domain name combines three elements: (1) the prefix “www” (2) Complainant’s famous word mark VW and (3) the suffix “.com”. According to Complainant, the part of the disputed domain name, “vw”, is identical to its famous trademark VW and the other part, “www”, is the well know acronym for “world wide web”, and an extremely common prefix (when succeeded by a period) to the domain name in a URL for a website on the Internet.
Furthermore, Complainant states that the letters “www” have no distinguishing capacity in the context of domain names, having the effect of drawing particular attention to the word succeeding them (in this case, “vw”). Complainant points out a similar previous UDRP decision in this sense: Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyP, WIPO Case No. D2010-0951.
Complainant contends that the practical effect of preceding a trademark with the letters “www” in a domain name identifies a case of typo-piracy or typo-squatting, since Respondent is attempting to attract to a different website the Internet users who mistakenly fail to insert a period after the letters “www” when typing the URL of the intended website. Complainant cites similar UDRP decisions where this practice has also occurred (World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256; and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273) and adds that because of both the visual similarity and the potential for typo-piracy, the disputed domain name is confusingly similar to the Complainant’s trademark VW.
Complainant attests that Respondent does not operate a business or offers any own goods or services on the website under the disputed domain name and that the website at the disputed domain name sponsors links leading to several websites of other car manufacturers or businesses where products are counterfeit or competitor products are offered for sale. It also states that, due to the amount of advertisements, the contents on the websites at the disputed domain name related to other car manufacturer, and especially considering the chosen disputed domain name (which is a clear misspelling from Complainant´s domain name ) it is quite obvious that Respondent just wants to ride on the good reputation of Complainant, having registered the disputed domain name only in order to receive a share of advertising revenue derived from advertisements or to sell the disputed domain name to Complainant.
Finally, Complainant argues that Respondent has no rights or legitimate interests regarding the disputed domain name, since it was never authorized by Complainant to incorporate its trademark VW into the disputed domain name, therefore it is not commonly known as VW and does not own any trademark rights to this expression. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for VW worldwide and that such trademark is entirely incorporated in the disputed domain name . “Vw” is an acronym for “Volkswagen”, which is the most distinctive part of Complainant’s company name and also a well-known trademark worldwide.
The Panel concurs that “www” is the well know acronym for “world wide web”, having no distinguishing capacity in this context and only drawing more attention to the word succeeding them, in this case “vw”.
Moreover, the fact that the website at the disputed domain name sponsors links leading to several websites of car manufacturers also generates a strong possibility of confusion, leading Internet users to believe they were in fact dealing with Complainant’s Volkswagen group.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark VW. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case, Complainant has provided sufficient prima facie proof of no rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not filed any Response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel also recognizes that Complainant has never authorized Respondent to incorporate its trademark VW into the disputed domain name, and since Respondent has chosen not to present any argument in this matter or attempted to prove any right, it is apparent that its only intention when registering the disputed domain name was to attract for commercial gain Internet users to its website by creating a false association with Complainant’s trademark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line 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.”
The Panel finds it is highly unlikely that Respondent was not aware of Complainant’s legal rights to the trademark VW at the time of registration of the disputed domain name, considering its fame and well known status, and believes this to be an indication that Respondent’s only intention when registering the disputed domain name was to gain profit by riding on Complainant’s good reputation.
Another clear indication that the disputed domain name was registered in bad faith is the deliberate use of misspelling (“wwwvw”, missing a dot between “www” and “vw”) in the disputed domain name. By doing so, Respondent was evidently seeking to attract Internet users who mistype or misspell Complainant's domain name to its website. Such registration and use of a misspelled domain name represents the practice of “typosquatting”, which constitutes bad faith. A similar understanding was employed in previous UDRP decisions, see Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol,WIPO Case No. D2001-0302.
Also, the fact that the website at the disputed domain name sponsors links leading to several websites of car manufacturers is another sign that Respondent was acting in a way as to make an undue profit from the use of a domain name confusingly similar to Complainant’s trademark.
Thereby, based on Paragraph 4(b)(iv) of the Policy, the Panel holds that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to the website, by creating a likelihood of confusion with Complainant’s trademark, which leads to the finding of the bad faith of Respondent when registering and using the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: June 8, 2013
Full & Egal Universal Law Academy