ADMINISTRATIVE PANEL DECISION
Volkswagen AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Edwin Davidson
Case No. D2015-1514
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America (“United States”) / Edwin Davidson of Nixa, Missouri, United States.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2015. On August 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2015 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 amendment to the Complaint on September 2, 2015.
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 September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Dawn Osborne as the sole panelist in this matter on October 6, 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 Complainant was founded in 1937 and is one of the world’s leading car manufacturers. The VOLKSWAGEN mark is registered in the United States and the European Community, the first in time registration in the United States going back to 1955.
The Domain Name was registered on May 3, 2015 and is inactive.
5. Parties’ Contentions
The Complainant’s submissions can be summarised as follows:
The Complainant was founded in 1937 and is one of the world’s leading car manufacturers. The VOLKSWAGEN mark is registered in the United States and the European Community, the first in time registration in the United States going back to 1955 and is exclusively associated with the Complainant. The Complainant is the registrant of a large number of domain names containing the VOLKSWAGEN mark including .
The Domain Name incorporates the famous VOLKSWAGEN mark in its entirety. It was registered and is being used in bad faith. Currently there is no active website at the Domain Name. The addition of the “.forsale” generic Top-Level Domain (“gTLD”) which is descriptive and simply emphasizes the trade mark element of the name does not diminish the confusing similarity between the Domain Name and the Complainant’s trade marks.
The Complainant has not licensed or otherwise permitted the Respondent to use its trade marks or any variation thereof. The Respondent is in no way connected with the Complainant. The Respondent is not commonly known by the Domain Name. The Respondent has registered the Domain Name to create the misleading impression of being in some way associated with the Complainant which is not the case. There is no legitimate reason for registering the Domain Name and the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant sent a cease and desist letter to the Respondent who did not respond.
The VOLKSWAGEN mark is internationally famous. The Respondent has registered the Domain Name to misleadingly divert consumers to the website at the Domain Name causing confusion amongst consumers by creating the impression of association with the Complainant and disrupting the Complainant’s business. Passive holding of a Domain Name can be an indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Domain Name consists of the Complainant’s well known mark VOLKSWAGEN and the gTLD “.forsale”. “forsale” is a new gTLD of general application and has no particular distinctive meaning of its own. Further, gTLDs with generic meaning gTLDs are usually not taken into account for the purposes of determining confusing similarity under the Policy. As such the Domain Name is confusingly similar to the Complainant’s VOLKSWAGEN registered mark for the purposes of the Policy. As such the Complainant has satisfied the first limb of the Policy with respect to the Domain Name.
B. Rights or Legitimate Interests
The Respondent does not appear to have any trade marks associated with the name “Volkswagen”. There is no evidence that he is commonly known by this name and he does not have any consent from the Complainant to use this name. He does not appear to have used the Domain Name for any bona fide offering of goods or services of his own. The Domain Name is inactive. Further, the Respondent did not respond to this Complaint and does not explain why he has registered the Domain Name. Given the famous nature of the Complainant’s mark it would indicate to most Internet users and members of the public an association with the Complainant. The Respondent does not deny any knowledge of the Complainant and its rights or provide any evidence of intended legitimate use. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Section 4(b) of the Policy sets out various criteria which are evidence of registration and use in bad faith which are non exclusive. However, UDRP panels have historically found that there can be a finding of registration and use in bad faith where there is passive use of a widely known trade mark in a domain name where there is no response and no explanation as to why the use could be in good faith. See the case of Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. The Respondent has not responded to the Complaint and has not explained why he would be entitled to register a domain name consisting of the Complainant’s widely known trade mark and a gTLD of generic application. As such the Panel finds on the balance of probability that the Respondent registered and used the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be cancelled.
Date: October 18, 2015