Complainants are Volkswagen AG of Wolfsburg, Germany, Bentley Motors Limited of Cheshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), SEAT, S.A. of Barcelona, Spain, and Automobili Lamborghini S.p.A. of Sant’Agata Bolognese, Italy, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Sergey V Bulygin, Cheboksary, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2015. On February 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On February 19, 2015, the Center transmitted a communication regarding the language of the proceedings to the parties in both English and Russian. On February 20, 2015, Complainants filed a request that English be recognized as the language of the proceedings. On February 23, 2015, Respondent requested that Russian be recognized as the language of the proceeding. On March 4, 2015, the Center informed the parties that, given the provided submissions and circumstances of the case, it had decided to: (1) accept the Complaint as filed in English; (2) accept a Response in either English or Russian; (3) appoint a Panel familiar with both languages mentioned above, if available.
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 March 4, 2015. In accordance with the Rules, paragraph 5(a), the initial due date for Response was March 24, 2015.
The Center appointed Dina Leytes as the sole panelist in this matter on April 10, 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.
In several informal communications sent to the Center prior to the due date for Response, Respondent stated in Russian that he is not familiar with English. On May 6, 2015, the Panel issued an Order requesting that Complainants translate the Complaint into Russian by May 16, 2015. A new due date for the Response was set of May 26, 2015. On May 15, 2015, Complainants filed their translation of the Complaint into Russian. On May 28, 2015, Respondent filed his Russian language Response to the Complaint. 4. Factual Background
Complainants are Volkswagen AG, Bentley Motors Limited, SEAT, S.A., and Automobili Lamborghini S.p.A. Complainants Bentley Motors Limited, SEAT, S.A., and Automobili Lamborghini S.p.A. are wholly or majority owned subsidiaries of Volkswagen AG, which controls twelve automobile brands in all (Volkswagen, Bentley, Audi, SEAT, Lamborghini, Bugatti, Ducati, Škoda Auto, Scania, MAN SE, Volkswagen Nutzfahrzeuge, and Porsche). These twelve automobile brands comprise what is known the Volkswagen Group, which was first founded on May 28, 1937. Today, the Volkswagen Group is one of the world’s largest automobile manufacturers and the largest car maker in Europe. The VOLKSWAGEN, BENTLEY, SEAT, and LAMBORGHINI trademarks are in use in connection with an array of goods and services in all 45 trademark classes throughout the world. Complainants’ trademark registrations include the following:
- Complainant Volkswagen AG holds International Registration Number 263239 for the word VOLKSWAGEN in connection with numerous goods and/or services under the WIPO Madrid International Trademark System, with a registration date of December 10, 1962;
- Complainant Bentley Motors Limited holds Community Trademark No. 3925187 for the word BENTLEY in connection with numerous goods and/or services, with a registration date of May 13, 2008;
- Complainant SEAT, S.A. holds International Registration Number 468440 for the word SEAT in connection with numerous goods and/or services under the WIPO Madrid International Trademark System, with a registration date of April 22, 1982;
- Complainant Automobili Lamborghini S.p.A. holds International Registration Number 959504 for the word LAMBORGHINI in connection with numerous goods and/or services under the WIPO Madrid International Trademark System, with a registration date of February 28, 2008.
Complainants’ registered marks include trademark registrations in the Russian Federation. Complainants’ principal websites are available at the following domain names: , , , and . Complainants own a number of other domain names that correspond to their marks. In particular, Complainants own the following .ru country code Top-Level Domains, where .ru designates the Russian Federation: , and .
According to the verification information provided by the Registrar, the disputed domain names were registered as follows:
- was registered on November 9, 2014;
- was registered on November 9, 2014;
- was registered on November 13, 2014; and
- registered on November 9, 2014.
Respondent appears to be an individual located in the Russian Federation. 5. Parties’ Contentions A. Complainants
Complainants request that this domain name dispute, which pertains to domain names owned by four related entities, be brought in a single consolidated proceeding on the grounds that Complainants have a common grievance against Respondent and that it would be equitable and procedurally efficient to permit consolidation. The basis of Complainants’ common grievance is that Respondent has registered domain names corresponding to trademarks controlled by the Volkswagen Group, to which all Complainants belong. The common conduct of Respondent is a clear pattern of registering domain names that correspond to trademarks owned by companies that are part of the Volkswagen Group on the same day or within a short period of time. Complainants offer a number of reasons why it would be equitable and procedurally efficient to consolidate the proceedings, including that (i) there is no apparent reason why consolidation would not be equitable; (ii) the substantive arguments made under each of the three elements of the Policy are common to each of the disputed domain names; (iii) Complainants are all represented by a single authorized representative for purposes of these proceedings; (iv) Complainants clearly stipulated the disputed domain names, the individual Complainants making a claim thereto, the rights and legitimate interests relied upon by Complainants, the remedy sought in respect of the disputed domain names, and the registrar with which the dispute domain names are registered; (v) the proceedings involve a relatively small number of domain names; (vi) the Complaint (including annexes) is not unreasonably voluminous; and (vii) there is an applicable fee schedule covering the Complaint as filed.
Complainants allege that the disputed domain names fully incorporate and are identical to their well-known trademarks.
Complainants allege that Respondent has no rights or legitimate interests in the disputed domain names. Complainants have not licensed or otherwise permitted Respondent to use any of their trademarks or any variations thereof, or to register any domain names incorporating their trademarks or any variations thereof. Further, Respondent is not commonly known by the disputed domain names. Complainants also allege that Respondent’s intention in registering the disputed domain names is to misleadingly divert Internet users looking for information about Complainants to his website.
Complainants allege that given the fame of Complainants’ marks, Respondent must have been aware of Complainants’ trademark rights when Respondent registered the disputed domain names, and that Respondent registered the disputed domain names to profit from the confusion of Russian Internet users who are looking for Complainants’ official websites. Respondent’s act of registering four domain names that incorporate trademarks controlled by the Volkswagen Group indicates a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in a corresponding domain name. The websites that are accessible from the disputed domain names , , and are used in connection with websites featuring pay-per-click links, with some links pertaining to automobiles, which is indicative of Respondent’s bad faith use and registration. The domain name resolves to a blank website. Complainant Volkswagen AG sent Respondent a cease and desist letter regarding the disputed domain name on November 13, 2014. However, no response to this correspondence was ever received from Respondent. Respondent’s bad faith registration and use of the domain name is evidenced in the fact that Respondent could not have registered this disputed domain name for any purpose other than to undermine Complainant’s goodwill and business and Respondent continues to maintain the registration after receiving Complainant Volkswagen AG’s cease and desist demand.
Complainants request that the disputed domain names be transferred to Complainant Volkswagen AG. B. Respondent
Respondent alleges that the disputed domain names are not confusingly similar to Complainants’ marks because the disputed domain names include the generic Top-Level Domain “.moscow.” Further, Respondent states that the disputed domain names do not correspond to the Complainants’ legal or company names: Volkswagen AG, Bentley Motors Limited, SEAT, S.A., and Automobili Lamborghini S.p.A.
Respondent alleges that he intends to use the disputed domain names in connection with social networking websites featuring information about automobile sellers and servicing centers that specialize in automobiles corresponding to Complainants’ brands in and around Moscow. The sites are being developed and will be accessible in August 2015.
Respondent alleges that he did not register and is not using the domain names in bad faith. Further, Respondent states that he never received Complainant’s cease and desist letter regarding and therefore could not have responded to it. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Consolidation of the Proceedings
The Panel accepts Complainants’ contentions that consolidation of Complainants is appropriate under the circumstances. Complainants have met their burden of demonstrating a common grievance against Respondent and the reasons why it would be equitable and procedurally efficient to permit consolidation. B. Language of the Proceedings
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to a disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the panel to determine the language of the proceedings based on the circumstances of the case.
According to the information received from the Registrar, the language of the registration agreement for the disputed domain names is Russian. The Panel ordered translation of the Complaint to ensure that Respondent, who communicated with the Center solely in Russian and stated that he did not understand English, had full and fair access to the allegations at issue. As a result, Complainants incurred additional expense related to the translation. Further, the proceedings were delayed to permit time for the Complaint to be translated into Russian and for Respondent to file its Response. As detailed above, on receipt of the Complaint in Russian, Respondent did take the opportunity to submit a response in Russian, albeit a relatively brief one that included no evidentiary support of the allegations it contained. Further, although the new Response deadline was May 26, 2015, the Response was only received by the Center on May 28, 2015. Respondent stated that the reason for the delay is that he does not routinely check his email and was unaware of the Panel’s Order. The Panel has no basis for evaluating the truthfulness of this statement, but given that the additional two day delay likely minimally prejudiced Complainants, the Panel accepts Respondent’s tardy Response.
The Panel notes that the Volkswagen Group is headquartered in Germany where German is the official language. Three of the disputed domain names, , , and , are used in connection with websites featuring pay-per-click links in English, which suggests that Respondent may have at least some understanding of the English language. The remaining disputed domain name, , resolves to a blank page.
In determining the language of the proceedings, the Panel is guided by considerations of fairness to both parties. Having ensured that Respondent had the opportunity to receive and respond substantively to the allegations in the Complaint in Russian, and in light of all of the circumstances, the Panel determines that English is the language of these proceedings and issues this decision in English accordingly. C. Identical or Confusingly Similar
The Panel finds that Complainants have trademark rights in the well-known marks VOLKSWAGEN, BENTLEY, SEAT and LAMBORGHINI. The Panel further finds that the disputed domain names are identical to Complainants’ VOLKSWAGEN, BENTLEY, SEAT and LAMBORGHINI trademarks. Contrary to Respondent’s assertion, the proper comparison here is between Complainants’ trademarks – and not the legal names of Complainants’ entities – and the disputed domain names. The disputed domain names incorporate Complainants’ trademarks in their entirety with the addition of the generic Top-Level Domain “.moscow.” However, the Top-Level Domain is commonly disregarded when making a determination regarding confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.2 and the cases cited therein.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainants. D. Rights or Legitimate Interests
To prevail, Complainants must make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. The prima facie case presented by Complainants is sufficient to shift the burden of production to Respondent to demonstrate that he has rights or legitimate interests in the disputed domain names. Respondent claims that he intends use the disputed domain names in connection with social networking websites featuring information about automobile sellers and servicing centers that specialize in automobiles corresponding to Complainants’ brands in and around Moscow. Respondent further claims that the sites will be available to the public in August 2015. The Panel is unable to accept this allegation, however, as Respondent has provided no evidence of what preparations he has made, other than purchasing the disputed domain names, to launch such sites in the next few months. Nor does the record provide any basis for or has Respondent otherwise shown that he has any rights or legitimate interests in the disputed domain names. The Panel concludes that Respondent has failed to demonstrate his rights or legitimate interests under the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainants. E. Registered and Used in Bad Faith
The Panel finds that Complainants have demonstrated that Respondent registered and is using the disputed domain names in bad faith. Complainants have alleged that Respondent registered and is using the disputed domain names in bad faith for a number of reasons, principally that the disputed domain names correspond to Complainants’ well-known marks and were registered and are being used to attract for commercial gain Internet users searching for the official websites of Complainants in accordance with paragraph 4(b)(iv) of the Policy. Three of the websites that are accessible from the disputed domain names, , , and , are used in connection with websites featuring pay-per-click links, with some links pertaining to third-party automobile-related sites, demonstrating an intention to profit from the confusion with the Complainant’s marks. The fact that is presently inactive does not invalidate Complainants’ claim of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In light of the circumstances, and noting Respondent’s pattern of registering domain name corresponding to Complainants’ marks, the Panel accepts Complainants’ argument that the use of the disputed domain names in connection with pay-per-click links and passive holding constitutes opportunistic bad faith registration and use of the disputed domain names on the part of Respondent.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainants. 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 names , , and be transferred to Complainant Volkswagen AG.
Dina Leytes
Sole Panelist
Date: June 8, 2015
Full & Egal Universal Law Academy