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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Contact Privacy Inc. Customer 12491602 / Richard Latman

Case No. D2017-0459

1. The Parties

The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Gołębiowska Krawczyk Roszkowski i Partnerzy Kancelaria Adwokacko-Radcowska Sp. p., Poland.

The Respondent is Contact Privacy Inc. Customer 12491602 of Toronto, Ontario, Canada / Richard Latman of Hunt Valley, Maryland, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <volkswagenconnect.com> (the “Domain Name”) is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2017. The Respondent sent several email communications on March 14 and 17, 2017.

The Center verified that the Complaint together with the amended 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 March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. The Respondent did not submit any response.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 27, 2017. 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 is part of the Volkswagen Group (the “Group”). It was founded in 1937 and is one of the world’s leading automobile manufacturers. As at 2015, the Group has a 12.3 percent share of the world passenger car market. The Group sales revenue in 2015 totaled EUR 213.3 billion.

The Group comprises twelve brands – Audi, Bentley, Bugatti, Ducati, Lamborghini, MAN, Porsche, Scania, SEAT, SKODA, Volkswagen Commercial Vehicles, and Volkswagen Passenger Cars, .

The Complainant uses the VOLKSWAGEN brand in connection with its cars. Through extensive use over the years, it has become a well-known brand. The VOLKSWAGEN trademark is registered globally across a range of goods and services, including in the United States (registration No. 0617131, registered on December 6, 1955). The Complainant also owns a large number of domain names containing the VOLKSWAGEN mark both under generic and county code Top-Level Domain. Its official website is at “www.volkswagen.com”.

According to the registrar, the Respondent registered the Domain Name on August 7, 2014. At the time of filing the Complaint, also at the time of drafting this decision, the Domain Name did not resolve to an active web page.

5. Parties’ Contentions

A. Complainant

The Complainant provides trademark registrations, and submits that its trademark is well known. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name incorporates the whole of the Complainant’s trademark, in combination with the word “connect”. This addition does not diminish the confusing similarity.

The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the VOLKSWAGEN trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Complainant argues that the Respondent is making illegitimate use of the Domain Name with the intent to misleadingly divert Internet users.

As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s world famous trademark at the time of the registration of the Domain Name. Although the web page currently is inactive, the Complainant argues that the Domain Name is held in bad faith (“passive use”) and with the intent is to misleadingly divert Internet users. It is also an indication of bad faith that the Respondent has not replied to the Complainant’s cease and desist letter.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. He sent, however, an email to the Center confirming his contact details, and an email on March 14, 2017 with the following text:

“…. we are using this domain name for VW dealers in the United States under their franchise agreements. They have the right to use the mark for email and web materials. Why are you trying to take this away from your dealers? Makes no sense but if you want a rebellion from them I can get it started...”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark VOLKSWAGEN.

The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark VOLKSWAGEN, with the generic term “connect” added. The addition does not dispel any confusing similarity.

For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Panel is not convinced by the Respondent’s email explanation of March 14, 2017, as it is not backed by any evidence of authorization of the Respondent or the dealers he refers to.

There is no evidence on the record to show that the Respondent is generally known by the Domain Name, and has acquired any trademark or service mark rights in that name.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name. It is likely that the Respondent’s intention for registering the Domain Name has been to use it for financial gain.

The Panel finds that on the balance of probabilities the Respondent registered and holds the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant, or otherwise disrupting its business. On the record before the Panel, it cannot reasonably conceive of a possible good faith use for the Domain Name. The finding is supported by the fact that the Respondent has not responded to the Complainant’s cease and desist letter, nor has the Respondent filed a proper response to the Complaint, and it is line with the consensus view, see, section 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:

“With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)”.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) 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 <volkswagenconnect.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: May 9, 2017

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