The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Antonio Piedras Perez of Benameji, Cordoba, Spain. 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 February 9, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
The Center sent an email communication to the parties on February 16, 2016, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on February 18, 2016. The Respondent did not submit any communication regarding the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Spanish, and the proceeding commenced on February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2016.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on February 23, 2016. 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 Complaint is based on the mark VOLKSWAGEN registered in the European Union, as well as Spain. In support of the Complaint, the Complainant relies on a list of VOLKSWAGEN trademarks, including International trademark designating Spain no. 702679 VOLKSWAGEN (registered on July 2, 1998 in classes 1-42), as well as a report with domain names owned by the Complainant, including the word "Volkswagen".
The disputed domain name was registered on October 15, 2015 and it is not currently linked to an active website. 5. Parties' Contentions A. Complainant
The Complainant asserts to be a company established in Germany in 1937, manufacturer of automobiles, and owner of trademark VOLKSWAGEN, an internationally famous trademark, covering an extensive range of goods and services in all 45classes of the International Trademark Classification.
The Respondent registered the disputed domain name, which contains the Complainant's trademark VOLKSWAGEN in its entirety.
The Complainant contends the disputed domain name is confusingly similar to its famous trademark, since the only difference between the disputed domain name registered by the Respondent and the VOLKSWAGEN trademark is that the disputed domain name is ended with the generic Top Level Domain ("gTLD") ".global", and that such modification does not diminish the confusing similarity between the disputed domain name and the Complainant's trademarks. Accordingly, there would be a confusing similarity between the Complainant's trademarks and the disputed domain name and so the first element required by the Policy would be satisfied.
The Complainant asserts the Respondent is not licensed or otherwise permitted to use any of the trademarks owned by the Complainant, or to register or use any domain name incorporating any marks or variation thereof. The Respondent is in no way connected with the Complainant, nor with its subsidiaries, and is not commonly known by the disputed domain name.
Furthermore, the Complainant asserts that based on the fame and reputation of the VOLKSWAGEN mark and its advertising activities all over the world, it can be concluded beyond any doubt the Respondent purposefully created a domain name, which consists of the Complainant's famous mark, with the purpose to create the misleading impression of being in some way associated with the Complainant, which is not the case. Therefore, the Respondent would be trying to exploit the fame and reputation of the Complainant's trademarks, with the possible aim was to attract to the Respondent's website Internet users looking for information on the Complainant and divert them from legitimate websites of the Complainant. Consequently, the Respondent may not claim any rights or legitimate interests in the disputed domain name.
Finally, the Respondent must have been aware of the famous nature of the trademark VOLKSWAGEN when he deliberately registered the disputed domain name. Creating the domain name by using a well-known trademark is intentionally misleading for Internet users. The Respondent's obvious purpose would be to misleadingly divert the consumers to the website under the disputed domain, causing confusion among consumers in the way of creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant. It is apparent that the intent of the Respondent was to exploit the reputation of the Complainant and its trademarks, and thus was registered and being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of Proceeding
Paragraph 11(a) of the Rules provides the language of the administrative proceeding shall be the language of the registration agreement unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Here, the Registrar confirmed to the Center the language of the Registration Agreement is Spanish. The Complaint was submitted in English and the Complainant requested English to be the language of the proceeding.
On February 16, 2016, the Center issued a Language of Proceeding notification to both Parties in both English and Spanish. In that notification, the Center instructed as follows:
"the Complainant is requested to provide at least one of the following:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Spanish; or
3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English."
On February 18, 2016, the Complainant requested for English to be language of the proceeding, claiming the German nationality of the Complainant, which would difficult the translation into Spanish of the Complaint, and the Annexes, the fact that English is the most commonly used language in the world, and the communications sent previously to the Respondent, which were in English, and the Respondent gave no indication he did not understand.
The Center has throughout the proceeding issued its case-related communications, including the Center's complaint notification documents, in both Spanish and English. The Respondent has chosen not to participate in the proceeding, and has been notified of his default. The Panel is satisfied that the Center's approach has been fair and appropriate, reserving the discretion to the Panel to determine the appropriate language of proceeding.
The Panel notes that the spirit of Paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full considerations to the parties' level of comfort with each language. In the present case, although the Registration Agreement for the disputed domain name is in Spanish, the fact the Center has given the Respondent the chance to object the language of the complaint, in Spanish, without a response, leads this Panel to find the inactivity of the Respondent cannot be attributed to a misunderstanding of the language, but rather to lack of interest to participate in this proceeding.
Therefore, the Panel renders its decision in English. B. Identical or Confusingly Similar
The information provided by the Complainant, clearly attests the disputed domain name can be considered identical to the Complainant's trademark.
Accordingly, this Panel finds that the disputed domain name is identical to the registered trademark VOLKSWAGEN, and this requisite has been satisfied. C. Rights or Legitimate Interests
The Respondent has not responded to the Complaint, thus, it is not possible to know his version of the possible existence of rights or legitimate interests in the disputed domain name. Neither has he refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel interprets the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.
Moreover, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the holder of a registered trademark and domain names, which are prior and substantially identical to the disputed domain name, and that it has not licensed the use or exploitation of its trademark to the Respondent.
Therefore, the Panel considers that the Complainant has also fulfilled the second condition required by the Policy. D. Registered and Used in Bad Faith
This third element requires the Complainant to prove that (1) the disputed domain name was registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The disputed domain name incorporates the trademark VOLKSWAGEN.
The Panel finds the Respondent must have had knowledge of the Complainant's mark VOLKSWAGEN and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant's mark having a strong reputation and being widely known; (ii) the disputed domain name comprising the entirety of the Complainant's mark; and (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name and (iv) the passive holding of the disputed domain name.
Moreover, the Panel also notes that it is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly imposes a good faith effort to avoid the registration and use of domain names corresponding to trademarks owned by third parties. The onus is on the registrant of a domain name to take the necessary steps to ensure that the registration of domain name does not infringe or violate the rights of third parties.
Additionally, the Panel finds that the Respondent has used the disputed domain name in bad faith.
Consequently, for all these reasons, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii) 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.
Rodrigo Velasco Santelices
Sole Panelist
Date: March 31, 2016
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