Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
Respondent is Mohammed Siddique of Edson, Alberta, Canada. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2014. On July 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 August 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 28, 2014.
The Center appointed Richard W. Page as the sole panelist in this matter on September 9, 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. Due to exceptional circumstances, it has been necessary to the Panel to extend the Decision due date. 4. Factual Background.
On May 28, 1937, the "Gesellschaft zur Vorbereitung des Deutschen Volkswangen mbH" (the Company for the Preparation of the German Volkswagen Ltd.) was establish in Berlin. The name was changed to "Volkswagenwerk GmbH" on September 16, 1938 and was entered into the Commercial Register on October 13, 1938.
Today, the Volkswagen Group with its headquarters in Wolfsburg, Germany, including subsidiaries Audi, Bentley, Bugatti, Lamborghini, MAN, Porsche, Scania, Seat and Ŝkoda, is one of the world's leading automobile manufacturers and for two decades has been the largest carmaker in Europe. Complainant's products have been marketed throughout the world under the trademarks VOLKSWAGEN and VW (the "VOLKSWAGEN Mark").
Complainant is, inter alia, the owner of numerous national, European and international registrations of the VOLKSWAGEN Mark.
In 2012, the Group increased the number of vehicles delivered to customers to 9.3 million (2011: 8.265 million) corresponding to a 12.8 percent share of the world passenger car market. In Western Europe, almost one in four new cars (24.4 percent) came from the Volkswagen Group, in Germany the market share of Complainant's Group is about 37.7 percent.
With a 12.7 percent increase in deliveries to 5.738 million units, the Volkswagen Passenger Cars brand closed 2012 with a new record. Volkswagen Commercial Vehicles also reported an increase of 4.1 percent in 2012, delivering 550,000 units worldwide. Therefore, about 6,288,000 units were sold under the VOLKSWAGEN Mark. All of these vehicles carry the VW brand in the front and the back of the vehicle.
Complainant's Group sales revenue in 2012 totaled EUR 192 billion, which corresponds to an increase of 20.9 percent (2011: EUR 159 billion). Net operating profit after tax in the 2013 financial year amounted to EUR 21.8 billion (2011: EUR 15.8 billion).
The Group operates 100 production plants in 18 European countries and nine other countries in the Americas, Asia and Africa. Approximately 550,000 employees work worldwide for Complainant's Group and produce each working day approximately 37,500 vehicles worldwide. The Volkswagen Group sells its vehicles in 153 countries.
Furthermore, Complainant is in 2012 listed number 9 of the world's largest corporations in the ranking of the Fortune Global 500. The Fortune Global 500 in an annual ranking of the top 500 corporations worldwide as measured by revenue. The list is completed and published annually by Fortune magazine.
The Disputed Domain Name was registered on March 16, 2014. 5. Parties' Contentions A. Complainant
Complaint alleges that it has numerous registrations of its world famous VOLKSWAGEN Mark. Complainant was a party in several earlier UDRP decisions. The UDRP panels have consistently found in these decisions that the VOLKSWAGEN Mark of Complainant is world famous (see e.g., Volkswagen AG v. Milas Auto,WIPO Case No. DTV 2006-0003 or Volkswagen AG v. Aditya Roshini, c/o Web Services Party,WIPO Case No. D2013-0635: "Complainant has one of the most famous and recognizable brands in the world and has an excellent reputation in Germany and internationally").
Complainant further alleges that the Disputed Domain Name is identical to the VOLKSWAGEN Mark. Complainant argues that the Disputed Domain Name contains the entirety of the VOLKSWAGEN Mark and the suffix ".company". Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010; Kabushki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464.
Complainant continues that the addition of a gTLD suffix such as ".company" is not distinctive.
Complainant contends that Respondent does not operate a business or offer any of its own goods or services on the website to which the Disputed Domain Name resolves. Further, Respondent has failed to make any active use of the Disputed Domain Name. Respondent has registered the Disputed Domain Name on March 16, 2014 and has not displayed any of its own content on the website since then. The website resolves to a parking site of the Registrar GoDaddy.
Complainant contends that Respondent is identified on the WHOIS database as "Mohammed Siddique." The name of Respondent has no apparent connection to the Disputed Domain Name that would suggest that Respondent is related to any trademark or trade name in which Respondent has rights.
Complainant contends that Respondent is also not commonly known by the name "Volkswagen" or . Respondent has none of its own rights in "Volkswagen" or in the absence of any license or permission from Complainant to use its name. No such license or permission exists.
Complainant contends that Respondent's only intention is to gain profit by riding on the good reputation of Complainant. It is difficult to imagine a fair use of the Disputed Domain Name , because it is obviously confusing and diverting internet users from Complaint's VOLKSWAGEN Mark which has an extremely strong reputation and is widely known, as evidenced by its substantial use throughout the world.
Complainant contends that Respondent knew about the VOLKSWAGEN Mark of Complainant. Complainant registered the VOLKSWAGEN Mark with the Trademark Clearinghouse. Therefore, Respondent got sufficient notice when attempting to register the Disputed Domain Name. Respondent decided with full knowledge of the VOLKSWAGEN Mark to continue to register the Disputed Domain Name, and continued even after receiving a cease and desist letter.
Complainant concludes that Respondent has not only registered the Disputed Domain Name but also registered numerous other domain names following the pattern of combining company names of famous automobile manufactures or famous world brands mainly under the new top-level domain ".company." All of these domain names are parked on the GoD parking website and therefore have the same content as the Disputed Domain Name. Complaint cites a series of UDRP cases stating that registering a pattern of domain names is evidence of a Respondent's bad faith.
Complainant makes numerous additional allegations including violation of paragraph 4(b)(iv) of the Policy by the use of the Disputed Domain Name with the intent to attract Internet users to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's trademark. Such actions constitute registration and use in bad faith. See Radio Globo S.A. v. Vanilla Limited,WIPO Case No. D2006-1557. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Failure to File a Response
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts the uncontested contentions of Complainant that it has enforceable rights in the VOLKSWAGEN Mark and that the use of the entire VOLKSWAGEN Mark in the Disputed Domain Name makes it identical or confusingly similar to Complainant's mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant's contentions. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-1110.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has failed to rebut this prima facie showing. Therefore, the Panel finds that Complainant has established the elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts Complainant's allegations of violation of paragraph 4(b)(iv) of the Policy by the use of the Disputed Domain Name with the intent to attract Internet users to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's trademark. Such actions demonstrate registration and use of the Disputed Domain Name in bad faith.
Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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.
Richard W. Page
Sole Panelis
Date: October 4, 2014
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