WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG, Bentley Motors Limited, Automobili Lamborghini S.p.A. v. Dzianis Zakharenka

Case No. D2015-0347

1. The Parties

The Complainants are Volkswagen AG of Wolfsburg, Germany / Bentley Motors Limited of Cheshire, United Kingdom of Great Britain and Northern Ireland / Automobili Lamborghini S.p.A. of Sant' Agata Bolognese, Italy, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.

The Respondent is Dzianis Zakharenka of Minsk, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <bentley.blue>, <bentley.pink>, <bentley.red>, <lamborghini.black>, <lamborghini.blue>, <lamborghini.pink>, and <volkswagen.black> are registered with 1API GmbH (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 2, 2015 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.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2015.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 10, 2015. 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 Complainants belong to the same company, the Volkswagen Group.

The Volkswagen Group operates in 154 countries through 175 companies and comprises brands from seven European countries (i.e. Volkswagen Passenger Cars, Audi, Bentley, Bugatti, Lamborghini, and Porsche, among others).

The Volkswagen Group has a12.8 percent share of the world passenger car market with regard to vehicles delivered to customers.

The Complainants own the following trademark registrations, among others:

In addition, the Complainants own the following domain names:

The disputed domain names <bentley.blue>, <bentley.pink>, <bentley.red>, <lamborghini.black>, <lamborghini.blue>, <lamborghini.pink>, and <volkswagen.black> were registered on November 17t, 2014.

5. Parties' Contentions

A. Complainant

The Complainants argue the following:

A. Identical or Confusingly Similar

That they are the rightful owners of the trademark registrations and applications containing the famous "Volkswagen", "Bentley," and "Lamborghini" designations.

That considering the long history, tradition and business activities of the Complainants it should be noted that VOLKSWAGEN, BENTLEY and LAMBORGHINI are internationally well-known trademarks for a wide range of consumers.

That the Volkswagen Group, the company to which the Complainants belong, operates the international websites of the Complainants through the domain names <volkswagen.com>, <bentley.com> and <lamborghini.com>.

That the incorporation of the Complainants' trademarks, in the disputed domain names, is sufficient to establish confusing similarity (and cite Roust Trading Limited v. AMG LLC WIPO Case No. D2007-1857).

That the suffixes ".black", ".red", ".blue", and ".pink" do not diminish the confusing similarity between the disputed domain names and the Complainants' trademarks.

That any person who sees or is exposed to the disputed domain names will likely assume that there is an association between said domain names and the Complainants. Therefore, Internet users worldwide are likely to relate the disputed domain names to their trademarks.

That the content and use of the disputed domain names is irrelevant for purposes of determining confusing similarity (and cite Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic WIPO Case No. D2000-1698).

B. Rights or Legitimate Interests

That the Complainants have not licensed or otherwise permitted the Respondent to use any of their trademarks or variations thereof, or to register or use any domain name incorporating said trademarks.

That the Respondent is not commonly known by the disputed domain names.

That based on the fame and reputation of the VOLKSWAGEN, BENTLEY, and LAMBORGHINI trademarks, it is evident that the Respondent registered the disputed domain names to create the misleading impression of being in some way associated with the Complainants and with the Volkswagen Group.

That the Respondent had no legitimate reason for registering the Complainants' trademarks as domain names (and cite CSA International (a.k.a Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071).

That the Respondent has not been commonly known by the disputed domain names and is making and illegitimate use of the disputed domain names

That none of the circumstances listed under paragraph 4(c) of the Policy, to demonstrate rights or legitimate interests in the disputed domain names, are present in the current case.

C. Registered and Used in Bad Faith

That the Complainants sent a cease and desist letter to the Respondent stating that the use of the disputed domain names was unlawful. Nevertheless, the Complainants indicate that the Respondent did not respond to the cease and desist letter and continued to use the disputed domain names, which is indicative of bad faith (and cite Nintendo of America, Inc. v. Garret N. Holland et al, WIPO Case No. D2000-1483).

That the Respondent has registered the disputed domain names in order to prevent the Complainants from reflecting their trademarks in the corresponding domain names, as the Respondent registered seven domain names that incorporate three of the Complainants' famous trademarks (and cite Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).

That the Respondent registered the disputed domain names to misleadingly divert consumers by creating an impression of endorsement or sponsorship between the Complainants and the disputed domain names.

That the disputed domain names were registered with the purpose of attracting Internet users to the websites to which the disputed domain names resolved.

That the Respondent was well aware of the Complainants' trademarks and their reputation when registering the disputed domain names, which is a strong indication of bad faith (and cite Succession Saint Exupéry – D´Agay v. Perlegos Properties, WIPO Case No. D2005-1085).

That the seven disputed domain names are currently inactive, and that said inactivity indicates bad faith (and cite Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615).

That it can be concluded that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainants are requested to prove that each of the three following elements is satisfied:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

As the Respondent has failed to submit a Response to the Complainants' contentions, the Panel may choose to accept as true all (or some) of the Complainants' reasonable allegations (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The Complainants claim that as a result of their marketing, advertising, and promotional activities, the VOLKSWAGEN, BENTLEY and LAMBORGHINI trademarks are well-known in an international manner. These assertions have not been rebutted by the Respondent.

Moreover, the Complainants have proven to be the rightful owners of the VOLKSWAGEN, BENTLEY and LAMBORGHINI trademarks in different countries, including the European Community and Ukraine, which is the country where the Respondent is domiciled.

The disputed domain name <volkswagen.black> is confusingly similar to the Complainant Volkswagen AG's VOLKSWAGEN trademarks because it entirely incorporates them.

The disputed domain names <lamborghini.black>, <lamborghini.blue>, and <lamborghini.pink> are confusingly similar to the Complainant Automobili Lamborghini S.p.A.'s LAMBORGHINI trademarks because they entirely incorporate them.

The disputed domain names <bentley.blue>, <bentley.pink>, and <bentley.red> are confusingly similar to the Complainant Bentley Motors Limited of Cheshire's BENTLEY trademarks because they entirely incorporate them.

Previous UDRP panels have stated that, to carry into effect the confusing similarity analysis, a generic Top Level Domain ("gTLD") should not be taken into consideration, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini WIPO Case No. D2000-0541).

Even though the disputed domain names comprise new gTLDs that have meaning or significance, the fact that said new gTLDs in this case refer to colors has little effect on avoiding the confusing similarity between the disputed domain names and the Complainants' trademarks. The use of a generic or descriptive term (such as the colors black, blue, red or pink) is not likely to prevent the likelihood of confusion (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Moreover, in this Panel's view it is likely that these new gTLDs will increase the confusing similarity due to the fact that consumers may relate the corresponding suffixes with the color of a Volkswagen, Bentley, or Lamborghini car.

The Panel finds: a) that the disputed domain name <volkswagen.black> is confusingly similar to the Complainant Volkswagen AG's VOLKSWAGEN trademarks; b) that the disputed domain names <lamborghini.black>, <lamborghini.blue>, and <lamborghini.pink> are confusingly similar to the Complainant Automobili Lamborghini S.p.A.'s LAMBORGHINI trademarks; and c) that the disputed domain names <bentley.blue>, <bentley.pink>, and <bentley.red> are confusingly similar to the Complainant Bentley Motors Limited of Cheshire's BENTLEY trademarks.

The Panel therefore finds that the first element of the Policy has been met

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names 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 names, even if you have acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted any evidence showing actual bona fide use, or preparations to use the disputed domain names with a bona fide offering of services, nor has the Respondent demonstrated that it is making a legitimate noncommercial or fair use of the disputed domain names.

In addition, nothing on the record suggests that the Respondent has been commonly known as "bentley.blue", "bentley.pink", "bentley.red", "lamborghini.black", "lamborghini.blue", "lamborghini.pink", and/or "volkswagen.black".

The Complainants state that they have not authorized, licensed, or otherwise permitted the Respondent to use any of their trademarks or variations thereof, or to register or use any domain name incorporating said trademarks. These allegations have not been rebutted by the Respondent.

In the Panel's view, the Respondent in this case is not entitled to register a domain name incorporating the company name and trademarks of the Complainants, because this conduct can cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).

There is no evidence on the record that would indicate that the Respondent has any rights to, or legitimate interests in, the disputed domain names. The mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092).

The Respondent has failed to submit arguments, or to file evidence showing, that it has rights or legitimate interests to the disputed domain names (See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, Caso OMPI No. D2003-0408).

Previous UDRP panels have determined that in the absence of evidence to the contrary, passive holding of a domain name cannot constitute a legitimate noncommercial or fair use of the disputed domain name. This precedent, in addition to the fact that the Respondent has neither used the disputed domain names nor made any demonstrable preparations to use them in connection with a bona fide offering for goods or services, lead this Panel to consider that the Respondent has no rights or legitimate interests in the disputed domain names (See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483).

The Panel therefore finds the second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain names 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 names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other on-line 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 its website or location.

This Panel accepts the following facts as true:

a) That the VOLKSWAGEN trademark is a well-known mark (see Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780; Volkswagen AG v. David's Volkswagen Page, WIPO Case No. D2004-0498; Volkswagen AG v. Emmanuel Efremov, WIPO Case No. D2014-0191; Volkswagen Financial Services AG v. tangzhou, WIPO Case No. D2013-0574);

b) That the LAMBORGHINI trademark is well-known and has a strong reputation (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148; Automobili Lamborghini Holding S.p.A. v. Andrew David Dawson, WIPO Case No. D2002-1003; Automobili Lamborghini Holding S.p.A. v. Primal Ventures Inc., WIPO Case No. D2008-0548; Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc., WIPO Case No. DTV2008-0010; Automobili Lamborghini Holding S.p.A. v. Jill Calangian, WIPO Case No. D2008-1443; Automobili Lamborghini Holding S.p.A. v. Szemerszky Zsolt, WIPO Case No. D2009-0774);

c) That the BENTLEY trademark is a well-known mark (see Bentley Motors Limited v. Sergey Nikolenko, WIPO Case No. D2011-0102; Bentley Motors Limited v. Adeeb Khaleel, WIPO Case No. D2012-2313).

In light of the above, and taking into account the multiple countries in which the Complainants have registered their VOLKSWAGEN, LAMBORGHINI and BENTLEY trademarks (including Ukraine, where the Respondent is domiciled) it is clear that the Respondent knew or should have known of the existence of the VOLKSWAGEN, BENTLEY and LAMBORGHINI trademarks when registering the disputed domain names <bentley.blue>, <bentley.pink>, <bentley.red>, <lamborghini.black>, <lamborghini.blue>, <lamborghini.pink> and <volkswagen.black>.

Previous UDRP panels have held that the use or registration of a domain name which is evidently connected with a well-known trademark, by someone with no connection with said trademark, suggests opportunistic bad faith (See Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1641). Moreover, this Panel considers that the registration, on the same day, of seven domain names expressly connected with three different famous trademarks, may constitute conduct in which the Respondent is preventing the owners of the referred trademarks from using their trademarks in the relevant domain name space (See Gruner + Jahr Printing & Publishing Co., G+J McCall´s LLC, Rosie O´Donnell and Lucky Charms Entertainment Inc. v. Savior Baby WIPO Case No. D2000-1741).

As indicated above, the VOLKSWAGEN, BENTLEY, and LAMBORGHINI trademarks have been registered in many jurisdictions by the Complainants. Said trademark registrations have been published by the corresponding Trademark Offices, and thus have had legal effect in the jurisdictions where said publications have taken place (such as in Ukraine, where the Respondent is domiciled)

In this Panel's view, this means that the registration of the disputed domain names was made with full knowledge of the Complainants' trademarks (See Advance Magazine Publihers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

The fact that the Respondent has not submitted any response implies that the arguments of the Complainant have not been contested and that the Respondent has not provided any type of evidence to refute the facts that derive from the Complainants' allegations, which means that all of the bad faith assertions made by the Complainants have remained uncontested (See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085).

This Panel further notes that the disputed domain names are not currently used in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use, as all currently redirect to inactive websites.

This Panel agrees with the fact that making the Complainants wait for some future use of the disputed domain names in order to demonstrate the Respondent's bad faith use would not further the rationale of the Policy (which is to remedy the abusive registration of domain names), because in such case the result would likely be the accumulation and use of the disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainants' goodwill, intellectual property rights, and business (See Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615).

Therefore, this Panel considers that under the circumstances of the case, there are no possibilities to determine any plausible or active use of the domain names that was not unlawful or could not affect the Complainants' intellectual property rights. For these reasons, the Panel considers that the registration and passive holding of the disputed domain names fulfill the criteria for determining that the domain names were registered and are being used in bad faith (See Advance Magazine Publihers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

Therefore, the Panel finds that the Respondent registered and used the disputed domain names <bentley.blue>, <bentley.pink>, <bentley.red>, <lamborghini.black>, <lamborghini.blue>, <lamborghini.pink> and/or <volkswagen.black> in bad faith. The third element of the Policy has been met.

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 names <bentley.blue>, <bentley.pink>, <bentley.red>, <lamborghini.black>, <lamborghini.blue>, <lamborghini.pink>, and <volkswagen.black> be cancelled.

Kiyoshi Tsuru
Sole Panelist
Date: April 24, 2015