The Complainant is Volkswagen AG, of Wolfsburg, Germany represented by Grenius Rechtsanwälte, Germany.
The Respondent is Constantin Knabe, of Hamburg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2015. On January 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 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 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2015. The Respondent has sent an email to the Center on February 17, 2015 informing his postal address, but no formal Response was filed with the Center.
The Center appointed Dietrich Beier as the sole panelist in this matter on February 25, 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 Volkswagen Aktiengesellschaft. The Complainant is a German automotive manufacturing company headquartered in Wolfsburg, Germany, which designs, engineers, manufactures and distributes passenger cars, commercial vehicles, engines and turbo machinery, and offers related services including financing, leasing and fleet management.
The Complainant is the proprietor of numerous trademarks for VW dating back to 1952, inter alia the German registration 682214, registered in class 12 on October 7, 1952. The Complainant is also proprietor of several trademarks for DAS WELTAUTO, inter alia CTM 008914178, applied for on February 26, 2010 and registered on June 20, 2011 in classes 12, 35, 37.
The VOLKSWAGEN and the VW brands are among the most famous brands in the world and have a substantial recognition and reputation internationally. This recognition and reputation can be derived by the following facts:
In 1937, the “Gesellschaft zur Vorbereitung des Deutschen Volkswagen mbH” (Company for the Preparation of the German Volkswagen Ltd.) was established in Berlin. The name was changed to “Volkswagenwerk GmbH” in 1938. Nowadays, the Volkswagen Group with its headquarters in Wolfsburg, Germany, including subsidiaries Audi, Bentley, Bugatti, Ducati, Lamborghini, MAN, Porsche, Scania, Seat and Škoda, is one of the world’s leading automobile manufacturers and for two decades the largest carmaker in Europe. The Complainant´s products have been marketed throughout the world under the trademarks VOLKSWAGEN and VW for at least six decades.
In 2013, the Group increased the number of vehicles delivered to customers to 9.7 million corresponding to a 12.8 percent share of the world passenger car market. In Western Europe almost one in four new cars (24.8 percent) comes from the Volkswagen Group, in Germany the market share of the Complainant’s group is about 37.7 percent.
All of these vehicles carry the VW brand in the front and back of the vehicle.
The Group operates 107 production plants in 19 European countries and a further nine countries in the Americas, Asia and Africa. Approximately 572,800 employees work worldwide for the Complainant’s Group and produce each working day approximately 39,350 vehicles worldwide. The Volkswagen Group sells its vehicles in 153 countries.
Several UDRP panels found that the trademarks VOLKSWAGEN and VW of the Complainant are world famous (see e.g. Volkswagen Aktiengesellschaft v. Brocante Almere, M Pippolo,WIPO Case No. D2011-0845).
“DAS WELTAUTO” is a successful pre-owned car selling program of the Complainant. The Complainant uses the trademark DAS WELTAUTO (German for “The World Car”) since June 1, 2010 for its pre-owned cars in 24 countries. DAS WELTAUTO is a global pre-owned car program with a wide selection of nearly new “Jahreswagen” cars and “Werkswagen” cars in excellent condition. The brand has since then expanded to many countries including Russian Federation, Italy, France, the United Kingdom of Great Britain and Northern Ireland, the United States of America, China, Japan and India.
The Respondent registered the disputed domain name on June 22, 2010. The website shows a link to the hosting provider which also offers an advertising platform. 5. Parties’ Contentions A. Complainant
In view of the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademarks VW and DAS WELTAUTO, since the disputed domain name incorporates Complainant’s famous trademark VW and part of the trademark DAS WELTAUTO whereas the suffix “.com” is not distinctive.
The Respondent does not operate a business or offers any goods or services on the website under the disputed domain name. The Respondent has not displayed any own content on the website. The website resolves to a parking website of the registrar 1&1 Internet AG which cannot be considered as offering bona fide goods or services. The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. The Respondent is not commonly known by the name “VW”, “weltauto” or by the disputed domain name . The Respondent has no rights in “VW”, “weltauto” or in the disputed domain name in the absence of any license or permission from the Complainant to use its trade name and trademark VW or trademark DAS WELTAUTO or to apply for or use any domain names incorporating such trademarks.
Furthermore, the Complainant’s trademark VW has an extremely strong reputation and is widely known, as evidenced by its substantial use throughout the world. The combination in the disputed domain name of the world famous trademark VW with the term “weltauto”, which is a part of another trademark registration of Complainant and the name for the Complainant pre-owned car program indicates that the Respondent had full knowledge of the trademarks and that his only intention is to gain profit by riding on the good reputation of the Complainant. It is difficult to think of a fair use of such domain name, because it is obviously confusing and diverting.
The Respondent is consequentially tarnishing the Complainant’s well-known and famous, therefore, valuable registered trademarks VW and DAS WELTAUTO and also the valuable goodwill that the Complainant has established in its trademarks through prior lengthy commercial use and promotion of the same, as evidenced above, without any right or legal justification for doing so.
The Respondent is further not actively using the disputed domain name for its own content. This cannot be considered as a noncommercial or fair use. There is no noncommercial or fair use of the Respondent recognizable.
Given the reputation of the Complainant’s trademarks, it is difficult to interpret the Respondent’s use of the disputed domain name other than as an attempt to profit by the deliberate diversion of Internet users, which want to acquire pre-owned automobile models of the Complainant.
Therefore, the disputed domain name is already evidence enough for seeing paragraph 4(b)(iii) as fulfilled. The Respondent deliberately seeks to disrupt the business of the Complainant.
Since the website is inactive, then this will have a negative effect on the Complainant's business, because Internet users will have to go elsewhere to locate information on the Complainant's business or will possibly stop looking for the Complainant's business online, thus disrupting the Complainant's business.
Thus, the Respondent’s registration and use of the disputed domain names constitutes use in bad faith within the meaning of UDRP paragraph 4(b)(iii).
In accordance with paragraph 4(b)(iv) of the Policy the use of the disputed domain name with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks constitutes evidence of registration and use in bad faith.
The Respondent therefore intentionally attempted to attract Internet users to his website through the fame and goodwill of the Complainant’s trademarks and the website under the disputed domain name . Apparently the Respondent sought to take advantage of this likelihood and errors made by Internet users when seeking the Complainant’s official website and typing the official address. The registration thus knowingly traded off the likelihood that consumers will mistakenly infer an affiliation between the Respondent’s websites and the Complainant, diverting customers away from the Complainant's official websites and attracting them to his own website.
The above is applicable even though the website does not resolve to an active site, the confusion has been created and the Internet user will be directed to a website that does not provide the information they are seeking (see Banco Bradesco S/A v. Jose Geraldo,WIPO Case No. D2013-1276). B. Respondent
The Respondent did not file any response compliant with paragraph 5 of the Rules. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 with respect to 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
The Complainant has established the fact that it has valid trademark rights for VW and DAS WELTAUTO in several classes.
The disputed domain name is confusingly similar to these marks of the Complainant since the disputed domain name incorporates all distinctive elements of these marks whereas the suffix “.com” as well as the hyphen are not distinctive at all.
The Panel therefore considers the disputed domain name to be confusingly similar to the trademarks VW and DAS WELTAUTO in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no rights in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no legitimate interest in the disputed domain name, since there is no indication that the Respondent is commonly known by the name “VW” or “Das Weltauto” nor that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the fame of the VW mark and the introduction of Complainant’s mark DAS WELTAUTO shortly before the registration of the disputed domain name, the Respondent must have been well aware of the Complainant and its trademarks when registering the disputed domain name. The Complainant had not authorized the Respondent to make use of its marks and to register the disputed domain name. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular disputed domain name without the Complainant’s authorization.
This Panel finds, accordingly, that the Respondent has registered the disputed domain name in bad faith.
The website, as indicated above, shows a link to the hosting provider which also offers an advertising platform.
This use furthermore indicates that the Respondent uses the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to a potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraphs 4(a)(iii) and 4 (b)(iv)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 transferred to the Complainant.
Dietrich Beier
Sole Panelist
Date: March 9, 2015
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