WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Todd Garber

Case No. D2015-2175

1. The Parties

The Complainant is Volkswagen AG of Wolfsburg, Germany represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.

The Respondent is Todd Garber of Los Angeles, California, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <volkswagen.video> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 1, 2015. On December 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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. On December 9, 2015, the Complainant submitted an amendment to the Complaint.

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

The Center appointed Angelica Lodigiani as the sole panelist in this matter on January 8, 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.

4. Factual Background

The Complainant was founded in 1937 and is one of the world's leading automobile manufacturers and the largest carmaker in Europe. The Volkswagen group comprises twelve brands, seven of which originate from European countries: Volkswagen Passengers Cars, Audi, Seat, Skoda, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and Man. In 2014, the Volkswagen group delivered 10.137 million vehicles to its customers, corresponding to a 12.9 % share of the world passenger car market. In western Europe, almost one in four new cars (25.1%) is made by the Volkswagen group.

VOLKSWAGEN is a registered trademark globally covering an extensive range of goods and services in all of the 45 classes. Among these trademarks, the Complainant is the owner of the following trademarks:

- VOLKSWAGEN, International registration No. 702679 of July, 2, 1998, designating, inter alia, the United States;

- VOLKSWAGEN, United States Patent and Trademark Office ("USPTO") trademark registration No. 617131, registered on December 6, 1955;

- VOLKSWAGEN, USPTO trademark registration No. 2835662, registered on April 27, 2004.

Due to the long history, tradition and business activity of the Complainant, the trademark VOLKSWAGEN enjoys high reputation.

The Complainant is also the owner of a large number of domain names containing the VOLKSWAGEN trademark, both under generic and country code Top Level Domains. Among these, <volkswagen.com>, which leads to the Complainant's main international website containing information on the Complainant's activities and products.

The disputed domain name was registered on July 8, 2015.

On July 27, 2015, the Complainant sent a cease and desist letter to the Respondent asking for the transfer of the disputed domain name as it conflicted with the Complainant's earlier trademarks. In his reply, the Respondent explained that he was willing to create a video website dedicated to the Complainant and to work directly with the Complainant on developing this website.

On August 26, 2015, the Complainant sent to the Respondent an email in which it explained the reasons why the disputed domain name had to be transferred to the Complainant, and declared its consent to work with the Respondent on the Respondent's other potential projects serving alleged purposes in acceptable manners. Moreover, the Complainant offered the reimbursement of the registration costs to the Respondent. The Respondent did not reply to the second letter of the Complainant.

5. Parties' Contentions

A. Complainant

The disputed domain name is confusingly similar with the Complainant's famous VOLKSWAGEN trademark.

The Complainant, which was established in 1937, is the owner of the well-known VOLKSWAGEN trademark, registered worldwide since may years. The disputed domain name consists of the well-known trademark VOLKSWAGEN and the generic Top-Level Domain ("gTLD") ".video". The "video"-suffix has only descriptive character in relation with VOLKSWAGEN. Moreover, the gTLD ".video", can be ignored for the purpose of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy.

As far as the contents of the website corresponding to the disputed domain name are concerned, they are irrelevant for the assessment of likelihood of confusion.

Accordingly, there is a confusing similarity between the Complainant's trademark and the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

None of the circumstances listed under paragraph 4(c) of the Policy to demonstrate the Respondent's rights or legitimate interests apply to the present case. The Respondent is not authorized by or related to the Complainant in any way. The Respondent is not known by the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or any variations thereof, or to register or use domain names incorporating any of the Complainant's trademarks or any variations thereof.

Considering the reputation of the VOLKSWAGEN trademark and its advertisings activities, it is beyond any doubt that the Respondent purposefully created a domain name consisting of the Complainant's famous mark, in order to create the misleading impression of being in some way associated with the Complainant. The Respondent is trying to attract Internet users looking for information on the Complainant to its website and to divert them from actual websites of the Complainant. The Respondent had no legitimate reason for registering the Complainant's trademark as a domain name.

For all reasons mentioned above, the Complainant believes that it has demonstrated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of proof now shifts to the Respondent who must provide concrete evidence that he owns rights to, or legitimate interests in respect of this domain name.

The disputed domain name was registered and is being used in bad faith.

The Complainant maintains that considering the reputation of the VOLKSWAGEN trademark, the Respondent must have been aware of its existence at the time he registered the disputed domain name.

The Complainant further maintains that the Respondent purportedly registered <volkswagen.video> to misleadingly divert consumers to the website under the disputed domain name, causing confusion among consumers by creating the impression of relation with, or sponsorship or endorsement by, the Complainant.

The Complainant sent a cease and desist letter to the Respondent in respect of the disputed domain name. The Respondent replied to the Complainant's letter by alleging that he registered the disputed domain name to create a video website dedicated to the Complainant and to work directly with the Complainant on developing this website. The Respondent also requested the name of the contact person responsible for managing the video assets of the Complainant. In order to try to settle the dispute amicably, the Complainant declared its consent to work with the Respondent to find other ways to achieve the Respondent's alleged goals in acceptable manners.

For the Complainant, the Respondent's assertions are not credible, given that following a reverse Whois search it appears that the Respondent registered at least 47 domain names coinciding with different famous trademarks in the automotive field (e.g., <harley.network>, <toyota.network>, <chevrolet.network>, <jaguar.video>, <lexus.video>, etc.). All these domain names are inactive.

According to the Complainant, the fact that the disputed domain name is held passively does not prejudge a legitimate use of the disputed domain name, rather such passive holding is deemed a bad faith indicator as many previous Panels have established in other UDRP cases.

Therefore, according to the Complainant, there is clear evidence that the Respondent registered the disputed domain name with an obvious commercial intent. In the Complainant's opinion, the Respondent engaged in a pattern of bad faith conduct, by preventing the rightful owners from reflecting their well-known trademarks in the corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the Complainant's VOLKSWAGEN trademark. The disputed domain name entirely reproduces the Complainant's trademark followed by the new gTLD ".video". The latter does not alter the identity of the disputed domain name with the Complainant's trademark considering that it is a compulsory element of the disputed domain name. As such, the ".video"-component should be disregarded in the comparison between the signs and the disputed domain name.

Therefore, the Panel concludes that the Complainant has made out the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel believes that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

In particular, the Complainant did not authorize the Respondent to reflect its trademark in the disputed domain name. The Respondent is not an authorized dealer or licensee of the Complainant, nor is related to the Complainant in any way. Furthermore, the Respondent is not known by the disputed domain name.

The Complainant addressed a cease and desist letter to the Respondent, challenging the registration of the disputed domain name and requesting its transfer to the Complainant. In order to settle the dispute amicably, the Complainant indicated its willingness to work with the Respondent to achieve the Respondent's alleged goals in acceptable manners. Moreover, the Complainant offered to reimburse the registration costs of the disputed domain name.

However, the Respondent did not reply to the Complainant's settlement proposal, which in the Panel's view means that the Respondent was willing to maintain the ownership of the disputed domain name, either for a commercial purpose, or to prevent the Complainant from reflecting its well-known trademark in the new gTLD ".video".

The Respondent had the opportunity to provide its arguments in support of his rights or legitimate interests in the disputed domain name. However, by not filing a Response, the Respondent missed this opportunity and the Panel is authorized to draw from the Respondent's default all such inferences it considers appropriate, in compliance with paragraph 14 of the Rules.

For all reasons mentioned above, the Panel concludes that the Complainant has provided convincing evidence that the Respondent lacks rights or legitimate interests in the disputed domain name, as required by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove both registration and use of the disputed domain name in bad faith.

As far as registration in bad faith is concerned, it is clear that when the Respondent registered the disputed domain name, he was well aware of the existence of the Complainant's trademark. The reputation of the Complainant's trademark is indeed indisputable and widespread. The Respondent was not authorized to register the disputed domain name in his own name. He did not even ask for such an authorization, but simply proceeded with the registration of the disputed domain name irrespective of the Complainant's earlier trademark registrations.

In line with prior UDRP decisions, the Panel concludes that the willful, unauthorized registration of a domain name identical to the Complainant's well-known trademark amounts to a registration in bad faith.

As far as use in bad faith is concerned, the Panel notes that the disputed domain name leads to a webpage containing the indication that the website is "coming soon" and asking to "check back to see if the site is available". Therefore, there is no active use of the website associated with the disputed domain name.

In this specific case, the passive holding of a domain name corresponding to a well-known third party's trademark, is to be held use of the disputed domain name in bad faith. Indeed, by not responding to the Complainant's cease and desist letter, and by not accepting the Complainant's settlement proposals, the Respondent clearly demonstrates that he registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Furthermore, the Respondent has engaged in a pattern of such conduct as provided for by paragraph 4(b)(ii) of the Policy. As a matter of fact, following a reverse WhoIs search it appears that the Respondent is the registrant of many other domain names corresponding to well-known third parties' trademarks in the automotive field, such as <harley.network>, <toyota.network>, <chevrolet.network>, <jaguar.video>, <lexus.video> and <mercedes.video>.

Furthermore, there are also indications that the Respondent registered the disputed domain name for commercial gain. Indeed, the Complainant offered the reimbursement of the registration costs to the Respondent, but the Respondent did not even reply to the Complainant's offer.

For all the aforesaid reasons, the Panel concludes that the Respondent is using the disputed domain name in bad faith.

Therefore, the Panel is satisfied that also the third requirement under paragraph 4(a)(iii) of the Policy is 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 name <volkswagen.video> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: January 22, 2016