The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is 郭丕林 of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2016. On October 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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. On October 18, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on October 20, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.
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 Chinese, and the proceedings commenced on October 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 25, 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.
The Respondent submitted an email on November 25, 2016, offering to transfer the disputed domain name to the Complainant. The Center informed the Parties on December 1, 2016 that the Panel instructed the Center to enquire the Parties whether they wish to enter into settlement negotiations. On December 5, 2016, the Complainant submitted an email requesting the Panel to proceed with issuing a decision in this matter. 4. Factual Background
The Complainant was founded in 1937 and is one of the world's leading automobile manufacturers and is the largest carmaker in Europe. The Volkswagen Group comprises twelve brands from seven European countries: Volkswagen Passenger Cars, Audi, SEAT, ŠKODA, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania, and MAN. In Western Europe, almost one in four new cars is made by the Volkswagen Group. In the first half of 2015 alone, the Volkswagen Group's overall vehicle sales amounted for more than five million units and its sales revenue was EUR 108.7 billion. In 2014, the Volkswagen Group delivered more than 10.1 million vehicles to consumers, corresponding to a 12.9 percent share of the world passenger car market.
The Volkswagen Group brands presented new products at a wide range of motor shows and events in 2015, including the New York International Auto Show in the United States of America, the Lake Wörthersee GTI festival in Austria, the Vienna Motor Symposium in Austria, and Auto Shanghai 2015 in China, which is where the Respondent is located.
The Complainant is the registrant of a large number of domain names containing its VOLKSWAGEN trademark, including where the Complainant reflects its main international website. This website contains information about the international activities of the Volkswagen brand, products, new campaigns, offers, and links to other websites reflecting the marketing activities in relation to the VOLKSWAGEN trademarks.
The Complainant owns trademark registrations for VOLKSWAGEN trademarks in all 45 International Classes for use with an extensive range of goods and services. Among others, the Complainant owns International Registration Nos. 702679 (July 2, 1998) and 835207 (January 21, 2004), both of which are designated for protection in China.
The Respondent registered the disputed domain name on October 1, 2015. The disputed domain name does not resolve to an active website. The Respondent's email address is also linked to more than 1,300 domain names, many of which contain third parties' trademarks, including the following domain names: , , and .
The Complainant sent the Respondent a cease and desist letter requesting that the Respondent cancel the disputed domain name registration. The Respondent initially responded by email in English and declared that the Respondent would give the disputed domain name to the Complainant and requesting a Chinese-language telephone conversation. The Complainant sent three additional email messages to the Respondent. The Respondent did not reply to any of the subsequent email messages. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. The Complainant is the owner of the VOLKSWAGEN trademark and owns many registrations for the mark. The Complainant has been manufacturing all types of automobiles since 1937. Given its long history, tradition and business activity, the VOLKSWAGEN trademark is globally well-known. The disputed domain name contains the VOLKSWAGEN trademark in its entirety. The only difference between the Complainant's VOLKSWAGEN trademark and the disputed domain name is the addition of the ".xin" generic Top-Level Domain ("gTLD") in the disputed domain name. The Panel may ignore the gTLD because it is a functional aspect of the domain name system. The gTLD does not diminish the confusing similarity between the disputed domain name and the Complainant's trademark. Therefore, the disputed domain name is confusingly similar to the Complainant's trademark.
The Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register or use any domain name that incorporates the Complainant's trademarks. The Respondent is in no way connected with the Complainant or any of its subsidiaries. The Respondent is not commonly known by the disputed domain name. Based on the fame and reputation of the VOLKSWAGEN trademark, it can be concluded that the Respondent purposefully registered the disputed domain name to create a false impression of being in some way associated with the Complainant. The Respondent is obviously trying to exploit the fame and reputation of the Complainant's trademarks. The Respondent is not making legitimate fair use of the disputed domain name.
The disputed domain name was registered in bad faith. The VOLKSWAGEN trademark is famous around the world, including in China. The Respondent must have been aware of the VOLKSWAGEN trademarks when registering the disputed domain name. By registering the disputed domain name using a well-known trademark the Respondent is intentionally misleading Internet users by creating the false impression of a relationship with or sponsorship or endorsement by the Complainant. The Respondent's intent was to exploit the reputation of the Complainant and its trademarks. Bad faith registration and use can be found by the Respondent's prior knowledge of the Complainant's trademarks. Additionally, the Respondent's email address is associated with many other domain names containing third parties' trademarks and the Respondent obviously has no rights in the trademarks and domain names, including , , and . This establishes that the Respondent has engaged in the pattern of conduct preventing rightful owners of the trademarks from reflecting such trademarks in the corresponding domain names. The Respondent's activity strongly indicates bad faith registration.
The disputed domain name is being used in bad faith. The website under the disputed domain name is inactive. That a domain name is passively held does not prejudge a legitimate use of that domain name. Instead, such passive holding is an indicator of bad faith. Passive use can be use in bad faith when considering the circumstances of the case. In this case, the Respondent registered a massive number of domain names incorporating well-known trademarks and is holding them passively as well. This is indicative of bad faith use of the disputed domain name.
The Complainant requests that the disputed domain name be cancelled. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. In this case the language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. Regardless, the Respondent's conduct suggests that the Respondent understands English. The email address linked to the disputed domain name contains an English word. The Respondent has registered many domain names containing English words. Most tellingly, the Respondent responded to the Complainant's cease and desist letter, which was written in English, by an email message to the Complainant's representatives also written in English. 6.2 Substantive Issues
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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 in respect of 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 Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has rights in the VOLKSWAGEN trademark. It is the registered owner of trademark registrations, including in China, for the VOLKSWAGEN mark. Use and registration of the VOLKSWAGEN mark by the Complainant precede the Respondent's registration of the disputed domain name by decades. The Panel accepts that the Complainant's mark is internationally well-known.
The disputed domain name is identical to the Complainant's trademark. It consists solely of the term "volkswagen," which is identical to the Complainant's VOLKSWAGEN trademark, and the gTLD ".xin." The gTLD, being a technical part of the disputed domain name, is not relevant in determining whether the disputed domain name is identical or confusingly similar to the VOLKSWAGEN trademark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc.,WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The Respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The Respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is not used in connection with any active website. Nor has the Respondent demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never authorized the Respondent to use the VOLKSWAGEN trademark or to register a domain name including the VOLKSWAGEN trademark.
The Respondent is not making any noncommercial or fair use of the disputed domain name.
Finally, the Respondent did not respond to the Complainant's letter requesting that the Respondent cancel the disputed domain name registration. The Panel concludes that the Respondent has no evidence to rebut the Complainant's assertions. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed 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 disputed domain name; or
(ii) The Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed 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 such website or location or of a product or service on such website or location.
The Respondent was undoubtedly aware of the Complainant and its VOLKSWAGEN trademark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its VOLKSWAGEN trademark are known widely and throughout the world. Additionally, the Complainant owns trademark registrations for its VOLKSWAGEN trademarks in many jurisdictions, including in China where the Respondent is located. A simple Internet search for "volkswagen" would have yielded many obvious references to the Complainant. The Respondent's intentional registration of a domain name incorporating the Complainant's well-known mark, being fully aware of the Complainant's rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
Bad faith registration can be inferred from a respondent's registration of a domain name incorporating a well-known mark of which the respondent must have been aware without any evident right to do so. See Hurriyet Gazetecilik ve Matbaacilik Anonim Sirketi v. Onuno L.L.C.,WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala,WIPO Case No. D2008-1059.
Although the Respondent is passively holding the disputed domain name, passive holding can still constitute bad faith use under the particular circumstances. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The disputed domain name is identical to the Complainant's extensively used and well-known mark and the Respondent must have been aware that Internet users would be led to believe that the disputed domain name and any resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206. The Respondent is holding several other domain names that are comprised of, in part, other well-known third-party marks, which is prima facie evidence that the Respondent regularly has been engaging in a pattern of abusive registrations. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer,WIPO Case No. DAU2013-0012. Additionally, the Complainant contends, and the Respondent does not deny, that the Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding, further evidence of bad faith. See Encyclopedia Britannica Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330. Under the totality of the present circumstances, the Respondent's passive holding of the disputed domain name amounts to use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. 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.
Kimberley Chen Nobles
Sole Panelist
Date: December 11, 2016
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