Westmore · UDRP DecisionVolkswagen.live, Volkswagen.pub
The Panel ordered transfer of <volkswagen.live> and <volkswagen.pub>. It found both domain names identical to the Complainant’s registered VOLKSWAGEN mark because each reproduced the mark in full and the respective gTLD was disregarded. The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. Bad faith registration and use were found based on the renown of the VOLKSWAGEN mark, the incorporation of that mark in both domain names, passive holding, the unanswered cease-and-desist communications, and the Respondent’s failure to answer the Complaint.
The timeline behind volkswagen.live
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind volkswagen.live — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
The decision illustrates a passive-holding transfer involving two domain names that exactly reproduced a well-known trademark under different new gTLDs. The finding did not rest on inactivity alone: the Panel considered the mark’s renown, exact incorporation, lack of authorization or bona fide use, unanswered cease-and-desist communications, and Respondent default together.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Volkswagen AG v. Cheng Jian Xin Case No. D2016-1754 1. The Parties The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Drzewiecki, Tomaszek & Wspólnicy Spólka Komandytowa, Poland. The Respondent is Cheng Jian Xin of Shi Jia Zhuang, Hebei, China. 2. The Domain Names and Registrar The disputed domain names <volkswagen.live> and <volkswagen.pub> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2016. On August 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 27, 2016, 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 August 31, 2016, the Center transmitted by email in English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on September 1, 2016. The Respondent did not comment on the language of the proceeding by the specified due date. 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 the Respondent of the Complaint in English and Chinese, and the proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2016. The Center appointed Jonathan Agmon as the sole panelist in this matter on October 10, 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 May 1937 and is one of the world’s leading automobile manufacturers. The Complainant’s group claims to have delivered a 12.9 percent share of the world’s passenger cars in 2014. The Complainant’s group comprises 12 brands from seven European countries: Volkswagen Passenger Cars, Audi, Seat, Skoda, Bentley, Bugatti, Lamborghini, Porsche, Ducati, Volkswagen Commercial Vehicles, Scania and Man. The Complainant owns registrations for the VOLKSWAGEN mark. The VOLKSWAGEN trademark registrations owned by the Complainant cover a range of goods and services in 45 trademark classes. Among others, the Complainant owns the following trademark registrations: VOLKSWAGEN – International Registration number 702679 registered on July 2, 1998, designating inter alia China; and VOLKSWAGEN – European Union trade mark number 009383506 registered on February 25, 2011. The Complainant also owns multiple domain names consisting of the term “volkswagen”, such as <volkswagen.com> and <volkswagen.org>. The disputed domain names <volkswagen.live> and <volkswagen.pub> were registered on August 5, 2016, by the Respondent. Both disputed domain names resolve to inactive webpages. 5. Parties’ Contentions A. Complainant The Complainant argues that both disputed domain names <volkswagen.live> and <volkswagen.pub> are confusingly similar to the Complainant’s VOLKSWAGEN trademarks. The Complainant further argues that both disputed domain names integrate its VOLKSWAGEN mark completely. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Respondent is not related in any way with the Complainant. The Complainant argues that it did not license or otherwise permitted the Respondent to use any of its trademarks or any variations thereof. Moreover, the Complainant argues that the Respondent is not commonly known by the disputed domain names. The Complainant further argues that the Respondent purposefully registered the disputed domain names, which consist of the Complainant’s famous VOLKSWAGEN mark, in order to exploit the fame and reputation of the Complainant’s trademarks. The Complainant further argues that none of the circumstances listed under paragraph 4(c) of the Policy are given in the present case: The Respondent is not authorized or related to the Complainant; the Respondent is not commonly known by the disputed domain names; and the Respondent is making illegitimate use of the disputed domain names with intent to misleadingly divert Internet users to the Respondent’s website. The Complainant argues that creating the disputed domain names by using a well-known trademark constitutes the Respondent’s bad faith. The Complainant further argues that the Respondent’s intention was to mislead Internet users and to divert consumers to the website under the disputed domain names. In this, the Respondent intended to cause confusion among consumers by creating the impression of relation with or sponsorship or endorsement of the Respondent by the Complainant. The Complainant further contends that the Respondent must have been aware of the VOLKSWAGEN marks, when the Respondent deliberately registered the disputed domain names. The Complainant argues that even though the disputed domain names are inactive now, they can be used at any time. Furthermore, the Complainant claims that the fact that a domain names are held passively can be deemed as a bad faith indicator. The Complainant sent a cease-and-desist letter to the Respondent’s email address on August 10, 2016, requesting immediate cancellation of the disputed domain names. The Complainant sent another letter via email on August 19, 2016 repeating its demands. The Respondent did not reply. For all of the above reasons, the Complainant requests the disputed domain names be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of August 27, 2016. The Complainant requested that the language of the proceeding be English. The Complainant, a German-based company, claims that it does not communicate in Chinese and submitting all documents in Chinese would entail substantial expenses on it for translation. The Complainant argues that English is one of the most popular languages in the world and is commonly used in international communications. The Respondent did not respond to the Complainant’s language request. The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” ( Groupe Auchan v. xmxzl , WIPO Case No. DCC2006-0004 ). The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding: (i) The disputed domain name consists of Latin letters, rather than Chinese letters; (ii) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint; (iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question. Upon considering the above, the Panel determines that English be the language of the proceeding. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of different VOLKSWAGEN trademarks. The disputed domain name <volkswagen.live> reproduces entirely the Complainant’s VOLKSWAGEN trademark with the addition of the generic Top-Level Domain (“gTLD”) “.live”. The disputed domain name <volkswagen.pub> reproduces entirely the Complainant’s VOLKSWAGEN trademark with the addition of the gTLD “.pub”. The addition of the gTLD suffixes “.live” or “.pub” does not have the capacity to distinguish the disputed domain names from the Complainant’s VOLKSWAGEN registered trademark and are disregarded when comparing the disputed domain names with the Complaint’s trademark. See Volkswagen AG v. Todd Garber , WIPO Case No. D2015-2175 ; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan , WIPO Case No. D2015-1733 ; Lego Juris A/S v. Chen Yong , WIPO Case No. D2009-1611 ; Dr. Ing. H.c. F. Porsche AG v. zhanglei , WIPO Case No. D2014-0080 . Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical to the VOLKSWAGEN trademarks in which the Complainant has rights. B. Rights or Legitimate Interests Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”), paragraph 2.1. In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Panel finds that the Complainant has established a prima facie case in this regard, inter alia , due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services. The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant presented evidence to show that the Complainant’s VOLKSWAGEN trademark is well-known. Other UDRP panel decisions support such a finding. See Volkswagen AG, Bentley Motors Limited, Automobili Lamborghini S.p.A. v. Dzianis Zakharenko , WIPO Case No. D2015-0347 ; Volkswagen AG v. Todd Garber , supra . It is therefore more than likely that the Respondent was aware of the Complainant’s well-known trademark when it registered the disputed domain name. The disputed domain names are identical to the Complainant’s well-known trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. See Edmunds.com, Inc. v. Triple E Holdings Limited , WIPO Case No. D2006-1095 . The disputed domain names are currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . Based on the evidence that was presented to the Panel, including the renown of the Complainant’s well-known trademark, the use of the Complainant’s trademark in the disputed domain names, the fact that the Respondent did not respond to the cease-and-desist letter of the Complainant, the passive use of the disputed domain names and the Respondent’s failure to answer the Complaint, the Panel finds that the disputed domain names were registered and are being used in bad faith. Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 names <volkswagen.live> and <volkswagen.pub> be transferred to the Complainant. Jonathan Agmon Sole Panelist Date: October 20, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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