The Complainant is Volkswagen AG, Germany (Complainant), represented by Gołębiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp.p., Poland.
The Respondent is Privacy Protected, Privacy Protected by Hostnet, the Netherlands (Respondent). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 22, 2020. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2020. Hostnet sent several emails to the Center. Accordingly, the Center notified Commencement of Panel Appointment on August 21, 2020. The Center appointed M. Scott Donahey as the sole panelist in this matter on August 31, 2020. 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 Complainant is a multinational company founded in 1937 and headquartered in Germany, known worldwide for its manufacture of motor vehicles including Volkswagen passenger cars and commercial vehicles, under the names of Audi, Bentley, Bugatti, Ducati, Lamborghini, Man, Porsche, Scania Seat and Skoda. The VOLKSWAGEN trademark is famous around the world such as international trademark reg. no. 702679 registered on July 2, 1998. Complaint, Annex H. Volkswagen has its key sales markets in Brazil, China, Europe, Mexico, Russian Federation and the United States of America. Complainant’s trademark registrations are numerous, and many were made in the late 1900’s. The trademarks registered by Complainant cover an extensive range of goods and services in all of 45 trademark classes. Complaint, Annex H. Complainant has also registered numerous domain names containing the famous VOLKSWAGEN trademark. Complaint, Annex E. Complainant has never authorized Respondent to use its trademark in any way. Complainant sent Respondent a cease and desist letter via the listed registrar. Complaint Annex F. Respondent registered the disputed domain name on February 21, 2020. Complaint, Annex B. The disputed domain name is not being used to resolve to an active web site. The web site contains information in the Dutch language saying that the domain is unavailable for registration. Complaint, Annex G. Respondent did not respond to the cease and desist letter nor to the Complaint. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to Complainant’s famous trademark. Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that the disputed domain name has been registered and is being used in bad faith. B. Respondent Hostnet informed the Center that it provides a privacy service to its customers, that Hostnet has forwarded the Complaint to its client, but that its client has not responded to their contact attempts. In any case, the Panel notes that Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the 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) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name consists of Complainant’s famous VOLKSWAGEN trademark and a generic Top-Level Domain (“gTLD”) in English “.store”. Disregarded the gTLD, the Panel finds that the disputed domain name reproduces Complainant’s trademark in its entirety. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.2. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s famous mark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Respondent is not using the disputed domain name to resolve to an active web site. However, it has long been held that when a disputed domain name incorporates the famous trademark of another and is a domain name that cannot be legitimately used without infringing the famous trademark of another, the domain name has been registered and is being used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, the Panel considers that the composition of the disputed domain name (i.e. the Complainant’s trademark in its entirety along with the gTLD “.store”) creates an impermissible risk of implied affiliation with the Complainant. Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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, M. Scott Donahey
Sole Panelist
Date: August 31, 2020
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