Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Tim Jevon of Rotorua, Bay of Plenty, New Zealand, self-represented. 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 December 11, 2014. On December 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Response was filed with the Center on January 12, 2015.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 26, 2015. 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.
On January 30, 2015, Complainant submitted an unsolicited Supplemental Filing purporting to rebut arguments advanced by Respondent. The usual rule is that, absent exceptional circumstances, all evidence and argument in support of a complainant's case must be included in its Complaint. Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited,WIPO Case No. D2010-0776. The Panel finds no exceptional circumstances to exist here warranting the submission of a supplemental filing; and Complainant has not provided a sufficient basis to find such exceptional circumstances. Accordingly, the Supplemental Filing will not be considered. 4. Factual Background
Complainant was founded in 1937 and is one of the world's leading automobile manufacturers (and the largest one in Europe), with 197 billion Euros in sales in 2013. It has numerous trademark registrations around the world for its VOLKSWAGEN mark and related marks. Complainant also has numerous domain name registrations including reflecting the ccTLD of the country (New Zealand) in which Respondent is located and in which the disputed domain name with the TLD ".kiwi" (a term commonly associated with New Zealand) is registered.
The disputed domain name incorporates Complainant's mark in its entirety. It was parked with "1st Domains" and does not yet have an active web site associated with it by Respondent, other than the home page which advertises the Registrar (1st Domains). 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name incorporates Complainant's famous mark in its entirety; that Respondent is not commonly known by and has no other rights or legitimate interests in the mark and has made no use of it; that Respondent failed to answer a November 2014 letter in which Complainant requested that Respondent cease and desist from use of Complainant's house mark as a domain name; and that Complainant's mark is famous worldwide and must have been known to Respondent such that Respondent's passive holding of the disputed domain name constitutes bad faith registration and use. B. Respondent
Respondent admits that the disputed domain name contains Complainant's trademark and that he does not have any "license or legal right to utilise the trademark". He contends, however, that he has not registered or used the disputed domain name in bad faith because he registered it "for the purposes of documenting my restoration of a Volkswagen Microbus Kombi […] which I own and am preparing to restore". He provides evidence of ownership of the said vehicle and indicates that he intended to allow other "Kiwi's" (New Zealanders) to keep up with his restoration efforts.
Respondent further denies that he received the November 2014 letter allegedly sent by Complainant, and denies that he has or had any intent to sell the disputed domain name for financial gain. He further notes that he is not in competition with Complainant and has no history of abusive domain name registrations. 6. Discussion and Findings A. Identical or Confusingly Similar
The parties agree, and the Panel finds, that the disputed domain name is identical to, and contains in full, Complainant's registered trademark VOLKSWAGEN (but for the TLD ".kiwi", but it is well established in countless cases under the Policy that the TLD does not typically distinguish a domain name from a corresponding mark). Accordingly, Complainant has met its burden on this first factor. B. Rights or Legitimate Interests
Respondent concedes that he does not have the "right to utilise the trademark" and does not seek to rest his defense on this ground. Accordingly, Complainant has met its burden on this factor as well. C. Registered and Used in Bad Faith
Respondent presents a plausible case, including some (albeit rather sparse) supporting evidence, that he registered the disputed domain name for the purpose of creating a blog relating to his proposed restoration of a Volkswagen vehicle known as a "Kombi". He states that he has "huge respect for the VW Audi Group and I love Kombi's".
He concedes, however, that to date (more than three months after registration) he still has not created any such web site. And while he offers "to put a big disclaimer on my site when I've made one stating that it is in no way affiliated with or endorsed by Volkswagen" there is no evidence yet in the record of what the precise content of any such web site might actually be or look like. Indeed, his response offers no particular timetable as to when such a web site might come into existence. He indicates that he has not yet "been able to setup hosting and made a website (which looks quite challenging I might add) […]". It thus does not appear that any such web site is imminent or is even clearly in the process of being established.
Respondent's registration and use of the disputed domain name comes closest to what is described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.5 as a "fan site". As discussed in that Overview, there are two prevailing views as to when a domain name used in connection with a fan site is legitimate. Under "View 1", "[t]he registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant's trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature."
Under "View 2", "[a] respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name, if the respondent is intentionally misrepresenting itself as being (or as in some way associated with) that individual or entity, or seeks to derive commercial advantage from its registration and use. Also, where the domain name is identical to the trademark, panels have noted that such respondent action prevents the trademark holder from exercising its rights to the trademark and managing its presence on the Internet."
In this case, under either View, Complainant prevails. Under View 1, Respondent would have to have "an active […]site", which currently he does not; and indeed it remains unclear if or when he ever will. As the summary of View 1 emphasizes, "the site should be actually in use" – which here, again, it is not.
Under View 2, moreover, domain names that are "identical to the trademark" – as is the one here – are particularly disfavored as they prevent the trademark holder from controlling its Internet presence.
Accordingly, while Respondent may legitimately have believed that he was entitled to register and use the disputed domain name for the purpose he describes, and while he may indeed be a genuine VW fan with an interest in restoration of a VW Kombi, the Panel finds that those facts alone do not entitle him to hold onto the disputed domain name containing, in full, Complainant's house mark.
The Panel concludes that Respondent's registration of a domain name identical to Complainant's famous house mark, and passive holding of such registration with neither use nor demonstrable plans to date to use it in a legitimate manner, constitute registration and use of the domain name in bad faith under 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.
Michael A. Albert
Sole Panelis
Date: February 5, 2015
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