Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is DasWelt Auto - German Seegelken of Campo Lameiro, Pontevedra, Spain / Contact Privacy Inc. of Toronto, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2014. On July 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details 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 Complainant on July 15, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 16, 2014.
The Center verified that the Complaint together with the amendment to 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 July 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 14, 2014.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on August 26, 2014. 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 one of the world's largest auto manufacturers and the largest in Europe. In 2013, it sold 9.731 million cars, with sales revenue of EUR 197 billion. Complainant has been in business since 1937 and now includes twelve brands from seven European countries. Since 2010, Complainant has used the DAS WELTAUTO mark for pre-owned cars in 24 countries.
Complainant owns many trademark registrations consisting of or containing the DAS WELTAUTO mark. Complainant also owns a large number of domain names containing the DAS WELTAUTO mark, both under generic and country-code Top-Level Domains (TLDs).
Respondent registered the disputed domain name on May 16, 2014.
According to Complainant, Respondent runs a car dealership and conducts its business under the name Das WeltAuto in Poznan, Poland, though Respondent is not affiliated with Complainant. The disputed domain name allegedly is being used to run that private business and gain profits from misleading Internet users searching for official DAS WELTAUTO websites and vehicles. Moreover, the disputed domain name reverts to Web pages containing Complainant's VOLKSWAGEN and DAS WELTAUTO marks, logos, and pictures of Complainant's cars.
One of Complainant's customers was confused as to Complainant's affiliation with Respondent's site. The client found a car that interested him through the disputed domain name, but Respondent asked him to pay in advance EUR 4,500 to transport the car to Spain. This seemed suspect so the client contacted Complainant and reported the situation.
The disputed domain name reverts to a webpage that is identical to the website under another disputed domain name, ,which is also currently the subject of a UDRP proceeding. 5. Parties' Contentions A. Complainant
Complainant asserts that it has rights in the DAS WELTAUTO trademark. It contends that the disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's DAS WELTAUTO mark in its entirety, and that the only difference between Complainant's mark and the disputed domain name is the addition of a hyphen. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns trademark registrations for DAS WELTAUTO. The disputed domain name is confusingly similar to Complainant's DAS WELTAUTO mark. It contains Complainant's DAS WELTAUTO mark in its entirety. The only difference between Complainant's mark and the disputed domain name is the addition of a hyphen. Numerous previous UDRP panelists have held that the addition of a hyphen cannot avoid a finding of confusing similarity. See, Hertz System, Inc. Hertz Equipment Rental Corp. v Vasilina Fedotova, WIPO Case No. D2012-2526.
Accordingly, the Panel finds that Complainant has rights in the DAS WELTAUTO mark and that the disputed domain name is identical or confusingly similar to Complainant's mark.
Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the negative fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the DAS WELTAUTO mark and has not authorized Respondent to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the DAS WELTAUTO mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark.
As noted above, the facts are that Respondent appears to run a car dealership and conduct its business under the name "das weltauto" in Poznan, Poland, though Respondent is not affiliated with Complainant. The disputed domain name allegedly is being used to run that private business and gain profits from misleading Internet users searching for official DAS WELTAUTO websites and vehicles. Moreover, the disputed domain name reverts to pages containing Complainant's VOLKSWAGEN and DAS WELTAUTO marks, logos, and pictures of Complainant's cars, evidencing further intent to make Respondent's site look like it belongs to Complainant. Indeed, according to Complainant, one of its customers confirmed that it was misled by the disputed domain name as it seemed that Respondent was Complainant's subsidiary or dealership in Poland. Additionally, the contact information provided on the disputed domain name's site refers to the registered office of Complainant's official affiliate in Poland, causing a further inference that respondent is affiliated with Complainant. The Respondent cannot in the present circumstances benefit from the reseller safe harbor defense. See among others Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
"for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It is difficult to conceive that Respondent did not know of Complainant's marks and products when Respondent registered the disputed domain name. As set forth above, the DAS WELTAUTO cars are protected by various trademark registrations. Complainant has used the DAS WELTAUTO mark for its pre-owned vehicles since 2010. All of this occurred before Respondent registered the disputed domain name on May 16, 2014. Further, the disputed domain name reverts to web pages containing Complainant's mark, logo and pictures of its cars, and contains the address of Complainant's true affiliate in Poland. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
As to use in bad faith, paragraphs 4(b)(iii) and (iv) apply here. In the Panel's view, Respondent clearly registered the disputed domain name primarily for the purpose of disrupting Complainant's business by diverting customers to the disputed domain name so Respondent could sell cars to them, in competition with Complainant. Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website, thus using Complainant's marks in bad faith. See DaimlerChrysler Corporation et al v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070. The disputed domain name reverts to web pages showing products identical to Complainant's cars, and which are sold under Complainant's DAS WELTAUTO mark. This content appears designed to reinforce the Internet user's impressions that the disputed domain names belong to Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelry, LLC v ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.
Furthermore, circumstances demonstrating registration and use in bad faith are not limited to those specifically set forth in paragraph 4(b). In this instance, this disputed domain name reverts to a website identical to the one associated with a domain name that is also currently the subject of a UDRP proceeding. In the circumstances, this also evidences bad faith.
This Panel therefore finds that Respondent registered and used the disputed domain name in bad faith pursuant to paragraphs 4(a)(iii) and 4(b) 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 cancelled, as requested by Complainant.
Sandra A. Sellers
Sole Panelist
Date: September 12, 2014
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