The Complainant is Volkswagen Aktiengesellschaft of Wolfsburg, Germany represented by Grenius Rechtsanwälte, Germany.
The Respondent is Robert Brodi of Dunakeszi, Hungary, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 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.
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 March 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2015. An informal Response was filed with the Center on April 2, 2015.
The Center appointed Adam Taylor 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. 4. Factual Background
The Complainant is the well-known German car maker. It 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 has traded under the name “Volkswagen” since the 1930s. It owns multiple trade marks for VOLKSWAGEN including International Trade Mark No. 702679 dated July 2, 1998, in classes 1-42.
The disputed domain name was registered on February 5, 2014.
At an unspecified date, there was a website at the disputed domain name with sponsored links referring to competitors of the Complainant, such as Mercedes. The site also stated at the top: “This domain may be for sale. Contact us.”
The Complainant sent a cease and desist letter to the Respondent by email on October 29, 2014. The Respondent did not respond.
The Respondent sent an email communication during this proceeding and its content is summarized at paragraph 5.B. below. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The relevant comparison is made with the second-level part of the domain name only. In any case, incorporating a trade mark in its entirety can be sufficient to establish identity or confusing similarity.
The Respondent lacks rights or legitimate interests.
There is no bona fide offering of goods or services. Due to the amount of advertisements on the Respondent’s website, the content related to other car manufacturers and the use of a domain name which is identical to the Complainant’s famous trade mark, it is quite clear, that Respondent’s purpose is to capitalise on the Complainant’s reputation and to receive a share of advertising revenues.
The Respondent has no apparent connection with the disputed domain name and is not commonly known by the names reflected in the disputed domain name.
There is no noncommercial or fair use as the Respondent has placed advertisements on the website at the disputed domain name.
The statement that the disputed domain name may be for sale together with the nature of the disputed domain name shows that the Respondent registered the disputed domain name to sell it to the Complainant in accordance with paragraph 4(b)(i) of the Policy.
The Respondent seeks to disrupt the Complainant’s business by directing potential customers to the Complainant’s competitors. The Respondent itself should be treated as a competitor under paragraph 4(b)(iii) of the Policy because it is acting in opposition to the Complainant.
In accordance with paragraph 4(b)(iv) of the Policy the Respondent has used the disputed domain name with the intent of attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. This is obvious from the nature of the disputed domain name itself as well as the content on the Respondent’s website.
The Respondent’s registration of a domain name which includes the Complainant’s famous trade mark is itself evidence of bad faith.
The Respondent’s website constitutes passive holding in bad faith.
The Respondent’s failure to respond to the Complainant’s cease and desist letter is further evidence of bad faith. B. Respondent
The following is a summary of the Respondent’s contentions.
The Respondent registered the disputed domain name in order to create “in the near future” a forum, namely a platform of exchange of views and a knowledge base for Volkswagen owners in order to facilitate maintenance of their cars.
The Respondent does not plan to sell vehicles or spare parts or vehicle-related services on his site using the name “Volkswagen” to deceive visitors and so the future use of the disputed domain name could not compromise the Complainant’s rights.
The Respondent does not plan to use the Complainant’s logo or colours and there will be an appropriate disclaimer on the site.
Rather, the site “could be” a platform for Volkswagen owners to change ideas, information and experience, e.g. “Tips and tricks”, “DIY”, “How to”, “Upgrade”, “Service and Maintenance”. It would be unfortunate if global manufacturers could disqualify every such webpage like this. Obviously they are not interested in the operation of such sites, which may bring to light cost-effective solutions at the expense of their over-priced services. Without such sites, global concerns could easily hide and deny common problems and design flaws in relation to their products, as owners would not easily be able to find a common communication platform. Also, with such sites, they would not have to spend billions recalling vehicles.
The meaning of the suffix “.guru” should be taken into account. The term means “a person who has a lot of experience in or knowledge about a particular subject”. As the suffix is not a “.com”, nobody would think that this domain name is the official Complainant’s website.
The Respondent has never operated a business or offered any of his own goods or services on the website at the disputed domain name, and has never used it as an advertisement platform. The website was an empty, blank page until the end of last year. The Respondent never changed the registrar’s default settings for the disputed domain name.
An email from the Registrar indicates that the advertising website at the disputed domain name was most likely the Registrar’s default parking page, created by the Registrar in accordance with its registration agreement.
In any event, the Respondent questions the authenticity of the screenshot exhibited by the Complainant because a white line appears between the horizontal tray at the bottom and the browser window, unlike in the many other website printouts exhibited by the Complainant. Also, if the Registrar had directed the disputed domain name to a parking page, then such pages would use totally automated scripts based on relevant keywords, in this case “Volkswagen”, and so if the site was generated by the Registrar, then the majority of the content would have related to Volkswagen, not Mercedes. 6. Discussion and Findings A. Informal Response
The Response is in the form of an email to the Center, which does not comply with the formal requirements in paragraph 5 (b) of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case. B. Identical or Confusingly Similar
The Complainant has rights in the mark VOLKSWAGEN by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Under the UDRP, the generic Top-Level Domain (“gTLD”) suffix has usually been disregarded when comparing the domain name and trade mark (except where the suffix forms part of the trade mark) – see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). If one were to disregard the suffix in this case, then the disputed domain name is identical to the Complainant’s trade mark.
Whether UDRP panels should take account of top-level suffixes in the case of “new gTLDs” was addressed in the first UDRP case involving a new gTLD. In Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206, the panel stated:
“The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach….”
Even if the gTLD suffix “.guru” is taken into consideration here, in the Panel’s view this would not serve to distinguish the disputed domain name and the trade mark.
Paragraph 1.2 of the WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, “.guru” is simply an additional descriptive term (plus a dot) which is far from sufficient to prevent threshold Internet user confusion. The trade mark remains by far the most dominant part of the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once 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 domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c)(i) of the Policy gives as an example of potential rights and legitimate interests: “your 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”.
The disputed domain name has been used for a parking page with links to competitors of the Complainant. While the responsibility for, and indeed authenticity of, this page is hotly disputed by the Respondent, and this is discussed further below, it is in any case clear that such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In this case, the advertising links are clearly related to the trade mark value of the term “Volkswagen”.
The Respondent claims that it intends in the “near future” to use the disputed domain name for a platform enabling Volkswagen owners to exchange views and information about their vehicles. Such use would indeed constitute a potentially legitimate use of the disputed domain name. However, the Respondent has provided no evidence of “demonstrable preparations” to use the disputed domain name for that purpose, as required by paragraph 4(b)(i) of the Policy. It is clear that unsupported assertions are not sufficient.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
Accordingly, the Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Respondent attacks the inauthenticity of the Complainant’s parking page screenshot but the Panel is entirely unconvinced by the reasons put forward by the Respondent. The Panel is aware that it is very common for parking pages to throw up results relating to competitors of the entity named in the domain name rather than simply advertisements relating to the entity itself. And it would have taken much more than the appearance of a thin white line separator in a screenshot to cause the Panel to even begin to contemplate evidence-tampering in this case.
In any event, the Respondent strongly denies responsibility for the Registrar’s parking page at the disputed domain name, of which he claims to have been unaware. See, however, paragraph 3.8 of WIPO Overview 2.0:
“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an ‘automatically'’ generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP). … Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”
Here, there is no evidence of any of the factors outlined in the passage above which may have weighed in favour of the Respondent. For example, there is no indication of a good faith attempt by the Respondent to prevent the offending advertising links. And of course it is not in dispute that the Respondent was aware of the Complainant’s trade mark when he registered the disputed domain name.
The Panel is also mindful that, as explained above, the Respondent has provided no evidence in support of his claimed intended use of the disputed domain name for an information-sharing website regarding the Complainant’s vehicles, despite the fact that the disputed domain name was registered over a year ago. Nor has the Respondent given any explanation for the delay in launching his allegedly-intended website.
Taking all of the factors together, the Panel concludes on balance that the Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
Even if the Respondent were not to be held responsible for the content of the parking page, and considering the Respondent’s claim that he has never used the website at the disputed domain name as an advertisement platform and that “it was an empty, blank page until the end of last year”, the Panel would nonetheless have concluded that there has been “passive holding” in bad faith in accordance with the principles set out in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. There the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The panelist went on to say that
“… in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
In this case, the Panel would have found that the undisputed fame of the Complainant’s mark, the lack of evidence supporting the alleged intended use of the website and the lack of an explanation for the delay in launching the site, collectively constitute passive holding in bad faith in this case.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 cancelled (as requested by the Complainant).
Adam Taylor
Sole Panelist
Date: April 24, 2015
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