The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Recep Zabun, of Sakarya, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2016. On September 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2016, 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 and noting that the language of the Registration Agreement is Turkish.
Pursuant to the Complaint submitted in English and the Registrar’s confirmation that Turkish is the language of the Registration Agreement, on September 27, 2016, the Center requested that the Parties submit their comments on the language of the proceeding. On September 29, 2016, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any comment on 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, and the proceedings commenced on October 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2016.
The Center appointed Selma Ünlü as the sole panelist in this matter on November 7, 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 Complainant in this administrative proceeding, Volkswagen AG, is one of the world’s leading automotive companies founded in 1937 in Germany and extended its activities of manufacturing automobiles through the world including Turkey.
The Complainant owns the registered VOLKSWAGEN trademarks in several classes around the world, as well as in Turkey.
As the Panel examined the registrations of the Complainant on the date of November 22, 2016, it has been noted that the Complainant has trademark registration numbered 103914 before the Turkish Patent Institute consisting of the trademark VOLKSWAGEN as its very first registration in Turkey, registered on April 25, 1963.
The Complainant has registered numerous domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the trademark VOLKSWAGEN. The registration date of these domain names shows that these were held long before the registration of the disputed domain name which was created on August 26, 2016 according to the available record.
The disputed domain name was accessible on November 22, 2016 and the content of the website at the disputed domain name was in the form of a forum regarding “defensive driving techniques”. On the other hand, the Complainant provided documents evidencing that the content of the website at the disputed domain name indicated that it was for sale together with a contact number at the time of filing of the Complaint.
The Complainant sent a cease-and-desist letter to the Respondent on September 1, 2016 and a follow-up email on September 6, 2016 but did not receive any positive written response.
The Respondent has chosen not to submit any formal Response to the contentions raised in the Complaint but sent three informal emails to the Center. In these emails, the Respondent stated that it did not accept the allegations in the Complainant and further noted on November 9, 2016 that it wishes to settle the dispute amicably which did not result in a positive way.
The disputed domain name was registered on August 26, 2016. 5. Parties’ Contentions A. Complainant
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to order that the disputed domain name be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
In summary, the Complainant contends the following:
Confusingly Similar
The Complainant states that it owns registered and well-known VOLKSWAGEN trademarks covering 45 classes. The Complainant is one of the largest automotive companies in the world, operating all over Turkey and also in many other countries.
The Complainant asserts that the disputed domain name comprises of the trademark VOLKSWAGEN followed by the Top-Level Domain “.website”, which is with its overall impression confusingly similar to its registered VOLKSWAGEN trademark since the disputed domain name contains the VOLKSWAGEN trademark in its entirety and therefore it is identical or at least confusingly similar to the Complainant’s trademark.
Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been one of the Complainant's licensees, nor is it otherwise authorized to use the Complainant's mark. The Respondent does not have any rights or legitimate interests in the disputed domain name.
Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant's trademark VOLKSWAGEN in the disputed domain name and is not using the domain name in connection with a bona fide offering of goods or services since the Respondent’s main purpose is to create a misleading impression of being in some way associated with the Complainant and get advantage of its well-known trademark.
Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that the trademark VOLKSWAGEN is a famous mark throughout the world. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it chose the Complainant’s trademark and registered thereof a domain name.
Moreover, the Complainant claims that the Respondent’s aim is to attract internet users to its website to cause confusion and disrupt the Complainant’s business.
Further, the Complainant asserts that the disputed domain name is offered for sale through the website at the disputed domain name, which provides with a phone number to be contacted. Moreover, the Complainant claims that an inscription of “Volkswagen Turkey” on the web site at the disputed domain name creates an impression that the Respondent is somehow affiliated with the Complainant.
Lastly, the Complainant emphasizes that the Complainant had sent the Respondent a cease-and-desist letter and a follow-up email to which the Respondent never replied. The Complainant claims that the lack of a response to this letter and email is an indication of the bad faith of the Respondent despite the efforts of the Complainant to find an amicable solution to the dispute. B. Respondent
The Respondent did not submit any formal Response to the contentions raised in the Complaint but sent three emails to the Center. In his final email of November 9, 2016, the Responded stated that it wishes to solve the matter amicably and transfer the disputed domain name to the Complainant, however, the settlement attempt was not successful. 6. Discussion and Findings 6.1. Language of the Proceeding
The disputed domain name’s Registration Agreement is in Turkish and pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. However, the Complainant submitted arguments along with the Complaint as to why the proceeding should proceed in English. The purpose of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
The Center also notified the Parties that the authority to decide the language of the proceeding lay with the Panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the Parties both in English and Turkish.
The Respondent did not officially reply to the Complainant’s request; however, it sent informal emails to the Center in Turkish. Within this communication, the Respondent did not express in any way that it cannot answer the allegations since it does not understand English and did not submit any comment regarding the language of the proceeding.
The Complainant has submitted its Complaint in English and supporting evidence both in English and Turkish. Moreover, the Complainant is not a Turkish entity. Therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. The Respondent has not objected to the Complainant’s language request and has not come forward to express any interest in this proceeding. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case.
At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989; Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Z, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, and is of the opinion that both Parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given the fact that the Center proceeded to issue its case-related communications to the Parties both in English and Turkish. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing this proceeding to be conducted in English. 6.2. Substantive Issues
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain name registered by the Respondent 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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of several registrations of the trademark VOLKSWAGEN.
The disputed domain name contains the Complainant’s trademark in its entirety. The Panel finds that the addition of the gTLD “.website” is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. It has been stated in previous UDRP decisions that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to a registered trademark.
The Panel is of the opinion that internet users would fall into a false impression that the disputed domain name is an official domain name of the Complainant. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar to the Complainant’s well-known VOLKSWAGEN trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are provided. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(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 burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.
The Panel also accepts that the Respondent is not commonly known by the disputed domain name, the Respondent has acquired no trademark or service mark rights, and the Respondent is not an authorized dealer or representative of the Complainant.
In light of the available record, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the VOLKSWAGEN trademarks. Therefore, the Panel finds on the current record that the Complainant has proved its rights in the VOLKSWAGEN trademarks and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the VOLKSWAGEN trademarks.
Finally, the Respondent has consented to transfer the disputed domain name to the Complainant, which the Panel takes as an acknowledgment that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Consequently, in the absence of an official response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the trademark VOLKSWAGEN in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent's website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the famous trademark VOLKSWAGEN, the Respondent, located in Turkey, was aware of the Complainant and its well-known trademark VOLKSWAGEN at the time of the registration of the disputed domain name. See, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226. The Panel believes that in the circumstances of this case the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of registration in bad faith.
Moreover, the Panel notes that:
(i) the Respondent did not submit any official response and is in default;
(ii) the Complainant’s trademark is a well-known trademark in the world as accepted in many other UDRP decisions;
(iii) despite the Complainant’s efforts to convince the Respondent to cease its unauthorized use of its trademarks, the Respondent has continued to violate the Complainant’s trademark rights;
(iv) by using the inscription “Volkswagen Turkey” on the web site at the disputed domain name, the Respondent intentionally tried to create an impression of affiliation with the Complainant;
(iv) when the Panel visited the website on November 22, 2016, it noted that the content appears to have been changed following the notification of the Complaint or the cease-and-desist letter to the Respondent. The website at the disputed domain name was offered for sale according to the evidence submitted by the Complainant which has been changed to a forum site regarding “defensive driving techniques”. The Panel concludes that the main purpose of registration was to earn profit therefrom.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under 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 transferred to the Complainant.
Selma Ünlü
Sole Panelist
Date: November 29, 2016
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