Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
Respondent is Richard Roberts, HD Home Theater of Austin, Texas, United States of America, self-represented.
The disputed domain name <volkswagen.forsale> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2016. On February 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on February 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2016. Apart from two emails of February 16 and 29, 2016, no official Response was filed with the Center.
The Center appointed David Perkins as the sole panelist in this matter on March 15, 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.
Two further email communications were received from Respondent on March 22 and 24, 2016 after the decision had been rendered. These email communications were forwarded to the Panel. The Panel confirms that it is not considering these late email submissions.
4.A.1 Complainant, which was founded in 1937, is one of the world’s leading manufacturers of motor vehicles. In 2014 Complainant delivered to customers 10,137 million automobiles, which equates to a 12.5 percent share of the world passenger car market. In Europe almost one (1) in four (4) new cars are made by Complainant, which equates to 25.1 percent of the market sales. For the first three (3) months of 2015 Complainant delivered 205,800 vehicles in the North American region. Complainant Group’s sales in 2014 totalled EUR.202 billion.
4.A.2 Complainant Group comprises twelve brands; Volkswagen passenger cars; Audi; SEAT; SKODA; Bentley; Bugatti; Lamborghini; Porsche; Ducati; Volkswagen commercial vehicles; Scania; and MAN.
The VOLKSWAGEN trade marks
4.A.3 The Complaint exhibits the following examples of its registered VOLKSWAGEN trademarks:
|
Territory |
Registration No. |
Mark |
Classes of goods/ services. |
Application & Registration Dates |
|
United States |
617,131 |
VOLKSWAGEN |
12 |
Application: May 4, 1954 Registered: December 6, 1955 |
|
United States |
2,835,662 |
VOLKSWAGEN |
1-10; and 12-42 |
Application: December 2, 1998 Registered: April 27, 2004 |
|
Community Trade Mark (CTM) |
009383506 |
VOLKSWAGEN |
1-11; 13-27;29-34; and 29-45 |
Application: September 2, 2010 Registered: February 25, 2011 |
|
International Registration (IR) |
702, 659 |
VOLKSWAGEN |
1-42 |
Registered: July 2,1998* |
|
* The IR covers some 80 countries, including the United States. | ||||
Complainant’s Volkswagen domain names.
4.A.4 The Complaint exhibits a large number of country code Top-Level Domains (ccTLDs) owned by Complainant which contain the VOLKSWAGEN and VW marks in addition to the Top Level Domains < volkswagen.com> and < volkswagen.org>. Complainant’s official website is at “www.volkswagen.com”.
4.B.1 In the absence of an official Response, what is known of Respondent is derived from the Complaint and its Exhibits and two Supplemental filings dated February 19 and 26, 2016, all of which include correspondence between the parties. That correspondence is summarised in paragraph 4.C below.
4.B.2 The disputed domain name was registered on January 5, 2016.
4.C Correspondence between the parties
4.C.1 On January 13, 2016 Complainant sent Respondent a “Cease and Desist" letter. On February 16, 2016 Respondent sent an email to the Center stating:
“Willing to transfer ownership of the distributed domain name volkswagen.forsale - before going to arbitration for a fee of $30,000 US. Please contact me by phone.......”
4.C.2 On February 17, 2016 Respondent emailed Complainant offering to sell to Complainant the disputed domain name, together with other TLDs incorporating “GolfR400”; “driverlessauto”; and “selfdrivingauto” for a total of USD 80,000.
4.C.3 Also on February 17, 2016 Respondent emailed Complainant stating, inter alia, the following:
“The domain volkswagen.forsale is parked, and is not affiliated with any website, as Volkswagen A.G. stipulated in the complaint. I am willing to transfer the disputed domain -volkswagen.forsale over to Volkswagen A.G. for a fee of $30k US. I am sure we can come to some sort of resolution to this matter before it goes to arbitration.”
Respondent explained that he was trying to raise money to buy a car and proposed that Complainant should grant him a USD 30,000 car credit to buy a new or used car from any Volkswagen dealership.
4.C.4 On February 18, 2016 Respondent sent Complainant a further email in which he offered to sell not only the disputed domain name and the other TLDs referred to in paragraph 4.C.2 above for USD 20,000 but also those domain names with six additional TLDs incorporating “volkswagencars” and “volkswagenautos’ for USD 80,000.
In the same email Respondent disclosed that he was the registrant of numerous additional TLDs and gTLDs containing various serial numbers of Mercedes vehicles, and the BMW, FIAT, Alfa Romeo and Bugatti brands, all of which were offered for sale at varying prices. The email also listed numerous other TLDs and gTLDs Respondent was offering for sale which included the brands HBO; Warner Bros.; Apple; and 20th Century Fox.
The emails summarised in this and the preceding paragraph were annexed to a First Supplemental filing by Complainant dated February 19, 2016.
4.C.5 In a second Supplemental filing dated February 26, 2016 Complainant drew attention to Respondent’s email dated February 25, 2016 addressed to the United Kingdom of Great Britain and Northern Ireland Dealer, H.R.Owen, offering to sell for USD 40,000 the domain name <bugatti.forsale>. As noted in paragraph 4.A.2 above, “Bugatti” is one of Complainant’s brands.
4.C.6 Finally, on February 29, 2016 Respondent emailed the Center in the following terms:
“I am willing to transfer the distributed domain name volkswagen.forsale over to Volkswagen A.G.. How do I do this? I never sold a domain, or transferred a domain. (I am not a broker) I am willing to transfer for $524.17US. The cost of domain and out of pocket expenses ($24.17 for domain registration + $500 for legal consultation). My only intention for the use of this domain was to partner with Volkswagen A.G., or Volkswagen Group of America, in creating a global sales, and marketing channel, for Volkswagen dealerships.
Can you help in resolving this issue? .......”
4.C.7 By email dated March 1, 2016 Complainant’s counsel advised the Center that Respondent’s offer to settle this administrative proceeding on the above terms was not acceptable to Complainant and that, consequently, Complainant wished the proceeding to continue.
5.A.1 Complainant refers to its rights in what it characterises as the famous VOLKSWAGEN mark, examples of which are set out in paragraphs 4.A.3 and 4.A.4 above.
5.A.2 Complainant asserts that, because the disputed domain name incorporates the VOLKSWAGEN mark in its entirety, it is confusingly similar to that mark. The gTLD suffix “for sale” is, Complainant says, to be disregarded when assessing confusing similarity. The Complaint cites and exhibits several decisions under the Policy which support those contentions in relation to descriptive suffixes to TLDs where the TLD incorporates Complainant’s trade mark in its entirety. The cases cited also include several specific to the VOLKSWAGEN mark, for example where the disputed domain names <my-volkswagen.com> and <volkswagengolfplus.com> were held to be confusingly similar to the VOLKSWAGEN mark: respectively, Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191 and Volkswagen Aktiengesellschaft v. Muqadas Wattoo, WIPO Case No. D2012-1917.
5.A.3 In the context of combining Complainant’s trade mark with the gTLD “.forsale”, the Complaint also cites the decision in Tom Hua and Hitech United Australia Pty Ltd. v. Zhengyi, WIPO Case No. DME2013-0002 in which, for the purpose of assessing confusing similarity, the gTLD suffix “.me” was discounted. Complainant also cites the decision in Volkswagen AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Edwin Davidson, WIPO Case No. D2015-1514, which involved the same disputed gTLD <volkswagen.forsale> that constitutes the disputed domain name in this proceeding. The panelist in that case held that the gTLD “.forsale” should not be taken into account for the purpose of determining confusing similarity. The disputed domain name in that case was cancelled.
5.A.4. Complainant’s case is that Respondent cannot demonstrate any of the circumstances evidencing rights or legitimate interests listed in paragraph 4(c) of the Policy. Specifically, Complainant says that Respondent is not commonly known by the disputed domain name. Nor has Complainant licensed or otherwise authorised Respondent to use its VOLKSWAGEN mark whether in a domain name, or at all.
5.A.5 Further, given the fame and reputation of the VOLKSWAGEN mark, Complainant says Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name. Complainant’s case is that Respondent clearly registered the disputed domain name to create the misleading impression of being in some way associated with Complainant and thereby to exploit the fame and reputation of the VOLKSWAGEN mark for Respondent’s own purposes. Any use of the disputed domain name would, Complainant says, be an illegitimate use to misleadingly divert Internet users.
5.A.6 First, Complainant says that it is inconceivable that, when registering the disputed domain name, Respondent was unaware of Complainant’s rights in the VOLKSWAGEN mark. Accordingly, such registration was in bad faith.
5.A.7 Second, Complainant asserts that, given the confusing similarity of the disputed domain name with the VOLKSWAGEN mark and Respondent’s inability to demonstrate rights or legitimate interests in that domain name, any use of the disputed domain name would inevitably lead to a likelihood of confusion among Internet users under paragraph 4b(iv) of the Policy. The fact that, as stated by Respondent, the disputed domain name is not in active use (paragraph 4.C.3 above) does not, Complainant says, preclude a finding of bad faith under paragraph 4(a)(iii) of the Policy. In that respect, Complainant cites several decisions under the Policy including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 - the “Telstra case” - where passive holding of a domain name has been held to amount to bad faith use.
5.A.8 Specifically, Complainant again cites the decision in Volkswagen AG v. Whois agent, Whois privacy Protection Service, Inc. /Edwin Davidson, supra - referred to in paragraph 5.A.3 above - where bad faith registration and use was found notwithstanding passive use of the <volkswagen.forsale> disputed domain name.
5.B.1 As noted in paragraph 3 above, there has been no Response other than Respondent’s two emails to the Center dated February 16 and 29, 2016. In the latter, which is (in part) reproduced in paragraph 4.C.6 above, Respondent explains his intention in registering and using the disputed domain name.
These are the submissions noted in paragraphs 4.C.4 and 5 above. As the Center correctly advised the Complainant, there is no express provision in the Rules permitting such supplemental submissions in addition to the Complaint. However, paragraph 10(d) of the Rules in effect gives the Panel discretion to determine the admissibility of Supplemental Filings. Since the communications from Respondent annexed to the two supplemental submissions bear directly onto his conduct in relation to the filing and proposed use of the disputed domain name, the Panel rules that such documents are admissible in this proceeding. Further justification for this ruling is derived from the fact that, although those two additional submissions were communicated to Respondent, he declined to respond to them.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 First, it is clear that Complainant has rights in the VOLKSWAGEN mark (see, for example, the registrations set out in paragraph 4.A.3 above), which is a very well known trade mark internationally.
6.6 Second, Complainant’s case on confusing similarity is well made out. Since the disputed domain name contains Complainant’s very well known VOLKSWAGEN mark in its entirety, the gTLD “.forsale” cannot avoid a finding of confusing similarity. If anything, in the Panel's opinion, it only adds to the confusing similarity.
6.7 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
6.8 It is clear from the facts before this Panel that Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. Nor are there any other circumstances indicating that Respondent could demonstrate rights or legitimate interests in the disputed domain name. Absent license or other authorisation from Complainant, Respondent’s proposed use of the disputed domain name (stated in his email to the Center dated February 29, 2016 which is reproduced in part in paragraph 4.C.6 above) could not constitute a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy) or a legitimate noncommercial or fair use (paragraph 4(c)(iii) of the Policy).
6.9 Accordingly, the Complaint satisfies paragraph 4(a)(ii) of the Policy.
6.10 Given the worldwide reputation of Complainant’s VOLKSWAGEN mark and Respondent’s correspondence with both the Center and the Complainant (summarised in section 4.C above), it is clear that the disputed domain name was registered in bad faith.
6.11 In the context of the well-known status of the VOLKSWAGEN mark, the Respondent”s failure to submit a substantive Response, the Respondent’s offers to sell the disputed domain name for valuable consideration far in excess of his out-of-pocket expenses directly related to that domain name and, generally, the facts set out in paragraphs 4.A and 4.C above, the Panel has no hesitation in finding bad faith use notwithstanding “passive holding” of the disputed domain name. The conclusion of the panel in the Telstra case that “...it is not possible to conceive of any plausible or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection or trade mark law” apply equally to the facts of this case.
6.12 Further, although not asserted in the Complaint, the content of the Respondent’s emails dated February 17, 18 and 29, 2016 (respectively, summarised in paragraphs 4.C.3, 4 and 6 above) also evidences - in the Panel’s view - circumstances falling within paragraphs 4(b)(i) (ii) and (iii) of the Policy. Given Respondent’s offer to sell the disputed domain name, together with additional domain names incorporating the brands of other vehicles produced by Complainant - for example, “Golf” and “Bugatti” - at prices significantly in excess of his out-of-pocket expenses related to such domain names, Respondent’s version of his intention to partner with Complainant in his email of February 29, 2016 simply does not ring true. It is also clear from the email dated February 18, 2016 that Respondent has engaged in a pattern of conduct of registering domain names incorporating both Complainant’s trademarks and also those of other parties.
6.13 Accordingly, the Complaint meets the requirement of paragraph 4(a)(iii) of the Policy.
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 <volkswagen.forsale> be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: March 21, 2016