The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, Germany.
The Respondent is Jan-Iver Levsen of Bad Vilbel, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Concepts B.V. d/b/a Open provider (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2015. On January 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2015, 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 January 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 18, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 2, 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. 4. Factual Background
The Complainant is the registered owner of numerous national, European and international trademark registrations for the term "VOLKSWAGEN", in particular Community trademark number 000703702 (word), registered on May 10, 1999 for goods and services in numerous classes, including goods in class 12 (amongst others "Vehicles; apparatus for locomotion by land") and in class 7 (amongst others "Motors, including their parts, other than for land vehicles").
The disputed domain name was registered on July 4, 2013. No content is displayed on the website to which the disputed domain name resolves. 5. Parties' Contentions A. Complainant
It results from the Complainant's undisputed allegations that the Complainant's predecessor company was established on May 28, 1937 in Berlin, Germany. The Complainant is today one of the world's leading automobile manufacturers. The Complainant's products have been marketed throughout the world under the trademark VOLKSWAGEN and VW for at least 60 years. The Volkswagen Group operates 107 production plants in 19 European countries and a further nine countries in the Americas, Asia and Africa. Moreover, the Volkswagen Group sells its vehicles in 153 countries.
The Complainant contends that the disputed domain name is confusingly similar to its trademark VOLKSWAGEN since it wholly incorporates the Complainant's trademark and merely combines it with the generic Top-Level Domain (gTLD) suffix ".limo". Furthermore, the gTLD ".limo" is related to the Complainant's business, since the term "limo" is the abbreviation of the term "limousine".
It further results from the Complainant's undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent has failed to make any active use of the disputed domain name since its registration and is therefore not offering bona fide goods or services. Moreover, the name of the Respondent has no apparent connection to the disputed domain name that would suggest that it is related to a trademark or trade name in which the Respondent has rights and the Respondent is not commonly known by the name "VOLKSWAGEN" or . Finally, no noncommercial or fair use of the disputed domain name by the Respondent is recognizable. Rather, the Respondent is offering the disputed domain name for sale both to the Complainant and also to the public through an auction platform. The Complainant therefore claims that the Respondent's only intention is to gain profit by riding on the Complainant's good reputation. It is difficult to think of a fair use of the disputed domain name , because it is obviously confusing and diverting.
Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. In particular, it results from the Complainant's undisputed allegations that the Respondent offered the Complainant the disputed domain name for sale via phone and combined this offer for sale with the proposal to further "register all domain names that a relevant to your brand for your company on time" for a "service fee of € 2000 / month". Additionally, the Complainant has filed further evidence from which it undisputedly results that the Respondent publicly offered the disputed domain name for sale also on an online auction platform for a minimum prize of € 25,000 and a "buy-it-now" prize of € 80,000.
Additionally, the disputed domain name was registered during the trademark claims period for the ".limo"gTLD. The Complainant's trademark was validated by the Trademark Clearinghouse prior to the registration of the disputed domain name. As a result, the Respondent must have been given a trademark claims notice of the Complainant's rights in the VOLKSWAGEN trademark.
In accordance with paragraph 4(i) of the Policy the Complainant requests the Administrative Panel appointed in this administrative proceeding that the disputed domain name be canceled. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or 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
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks for VOLKSWAGEN in particular Community trademark number 000703702, registered on May 10, 1999. This Community trademark predates the registration date of the disputed domain name.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g.Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070 ; Chloé S.A.S. v. DVLPMNT Marketing, Inc.,WIPO Case No. D2014-0039). The Panel shares this view in the case at issue where the Complainant's registered trademark VOLKSWAGEN is fully included in the disputed domain name and combined with the gTLD suffix ".limo".
In accordance with the well-established precedent (see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0") the TLD suffix in a domain name will be generally disregarded under the confusing similarity test as it is a technical requirement of registration. Additionally, this Panel holds that the afore-mentioned rule might be complemented in cases where new gTLDs such as ".limo" are involved(cf. LEGO Juris A/S v. Jack Hollingsworth,WIPO Case No. D2015-0081 for another new gTLD, i.e. ".london"). In fact, Internet users will not only adjudge the gTLD ".limo" its undisputed technical function, but additionally understand it as being the abbreviation of the term "limousine" and therefore as a generic term, which is totally applicable to the field in which the Complainant plays a worldwide prominent role, i.e. the automotive sector. In the Panel's view, the suffix gTLD ".limo" combined with the trademark VOLKSWAGEN is therefore likely to be understood by Internet users as referring to limousine cars originating from or connected to the trademark VOLKSWAGEN. As a result, the gTLD ".limo" is not qualified to exclude confusing similarity between the Complainant's trademarks and the disputed domain name but does even support the findings of confusing similarity in the case at hand.
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances are those indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent's documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy).
Based on the evidence before it, this Panel is satisfied that the Respondent knew or should have known that the disputed domain name consisted of the Complainant's VOLKSWAGEN trademark when he registered the disputed domain name. In fact, the Complainant has established that its trademarks have existed for a long time and its products have been marketed under the trademark VOLKSWAGEN for at least 60 years throughout the world and in particular also in Germany, where the Respondent resides. In addition, the disputed domain name was registered during the trademark claims period for the ".limo" gTLD. The Complainant's trademark was validated by the Trademark Clearinghouse prior to the disputed domain name's registration. As a result, the Respondent must have been given a trademark claims notice of the Complainants rights in the VOLKSWAGEN -trademark.
It further results from the evidence provided by the Complainant that the Respondent has offered the Complainant the disputed domain name for sale via phone. It further combined this offer for sale with the proposal to "register all domain names that a relevant to your brand for your company on time" for a "service fee of € 2000 / month". In addition, this Panel is satisfied that the Respondent offered the disputed domain name for sale also to the public on an online auction platform for a minimum prize of € 25,000 and a "buy-it-now" prize of € 80,000. It is self-evident that the requested figures largely exceed any out-of-pocket costs directly related to the disputed domain name.
Considering, firstly, the fact that the Respondent knew or should have known that the disputed domain name consisted of the Complainant's VOLKSWAGEN trademark when he registered the disputed domain name and, secondly, the large sale prize requested by the Respondent in return for transferring the disputed domain name, this Panel is satisfied that the circumstances indicated in paragraph 4(b)(i) of the Policy are fulfilled.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(i) of the Policy.
Finally, the Panel notes that the disputed domain name is held passively. Previous UDRP panels have found that such use does not prevent a finding of bad faith (cf. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Complainant has thus established all three elements necessary under paragraph 4(a) of the Policy in order to obtain an order that the disputed domain name should be cancelled. 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.
Tobias Malte Müller
Sole Panelist
Date: March 16, 2015
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