The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Gołębiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp. p., Poland.
The Respondent is Wang Lian Feng 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 April 19, 2018. On April 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2018, 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 April 25, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 27, 2018, the Complainant confirmed its request that English be 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 May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on June 4, 2018. 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
Founded in 1937, the Complainant, is a leading multinational automobile manufacturer headquartered in Germany. The Complainant holds the title of the world’s largest automaker by sales in 2017, selling 10.7 million vehicles with revenue earnings of EUR 230.7 billion. The Complainant has two major joint-ventures in China: SAIC Volkswagen Automotive Co., Ltd., formed in 1985 and FAW-Volkswagen Automobile Co., Ltd., formed in 1991.
The Complainant trades under the VOLKSWAGEN trade mark, and owns a sizeable portfolio of registrations worldwide. In particular, the Complainant holds the following International Registrations designating a large number of jurisdictions, including China:
VOLKSWAGEN International Registration No. 702679, registered July 2, 1998, in classes 01 through to 42.
International Registration No. 835207, registered January 21, 2004, in classes 07, 12, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, and 44.
VOLKWAGEN International Registration No. 1271830, registered November 12, 2014, in classes 04, 07, 09, and 11.
The Complainant holds numerous domain names incorporating the VOLKSWAGEN trade mark, both under the generic Top-Level Domains (“gTLDs”) and country-code Top-Level-Domains (“ccTLDs”): , , and many others.
The disputed domain name was registered on March 19, 2018. At present, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the trade mark, the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that 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. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company based in Germany. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese regarding the language of the proceeding, but the Respondent did not reply; and
(d) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2. Analysis of the Complaint A. Identical or Confusingly Similar
The Complainant submitted extracts of the VOLKSWAGEN trade mark registrations from the official public records of the World Intellectual Property Organization and the European Union Intellectual Property Office. The registrations cover a broad range of goods and services, including vehicles.
The Panel finds that the Complainant has adduced sufficient evidence to demonstrate its established rights in the VOLKSWAGEN trade mark.
The Panel notes that the disputed domain name is entirely composed of the Complainant’s VOLKSWAGEN trade mark without any deviation. It is accepted that the addition of “.tech”, a gTLD, is viewed as a standard registration requirement and as such is disregarded under the first element of the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds that the disputed domain name is without doubt, identical to the Complainant’s VOLKSWAGEN trade mark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has not been licensed or otherwise permitted to use the VOLKSWAGEN trade mark or its variations. The Respondent is not connected or affiliated to the Complainant or any of its subsidiaries. The Complainant further contends that it is not aware of the Respondent being “commonly known” by the name “Volkswagen”. The Respondent, is a Chinese individual, whose name bears no resemblance to the disputed domain name.
The Panels notes there is no evidence of the Respondent having filed any trade mark identical with or similar to the disputed domain name. The Respondent has not proffered any legitimate reason for selecting the disputed domain name or shown any intention to make a bona fide offering of goods or serviced under the disputed domain name.
In the absence of any evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The first use in trade of the Complainant’s “Volkswagen” name began over eighty year ago. Since then, this name has been and continues to be widely used and extensively registered as a trade mark around the world, including in China. The disputed domain name was registered well after the registration of the Complainant’s VOLKSWAGEN trade mark, and three decades after the Complainant entered the Chinese market. By 2017, the Complainant had substantial commercial operations in China and would have acquired a high degree of fame in the country.
Where the Complainant’s mark is so widely known that a respondent cannot credibly claim to have been unaware of the mark, previous UDRP panels have been prepared to hold that the domain name was registered in bad faith. See LEGO Juris A/S v. Domains by Proxy, Inc., DomainsByP / DBA David Inc.,WIPO Case No. D2011-1839.
In the present case, the worldwide fame of the Complainant’s VOLKSWAGEN trade mark is indisputable. A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of the VOLKSWAGEN trade mark, and its business activities. It is inconceivable that the Respondent did not have actual knowledge of the Complainant or its trade mark rights.
The disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent has failed to respond to the Complaint. There is no evidence of any actual or contemplated fair use by the Respondent of the disputed domain name. Rather, the choice of a gTLD which is associated with the high technology nature of the industry in which the Complainant operates, signals a possible intent to confuse Internet users.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, by continuing to hold the disputed domain name, the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the Complainant has satisfied the third element under 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 transferred to the Complainant.
Rachel Tan
Sole Panelist
Date: June 18, 2018
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