Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Volkswagen of America, Inc. , Auburn Hills, MI, USA ("Complainant") represented by Stephen J Arpaia, 2604 Elmwood Avenue #178. The Respondent is Site Design Online, San Francisco, CA, USA ("Respondent").

The domain name at issue is bayareavw.com registered with Network Solutions.

On October 31, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 2, 2000; The Forum received a hard copy of the Complaint on October 4, 2000.

On October 4, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name bayareavw.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bayareavw.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent did not submit a response in this matter.

ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. Here, Respondent has failed to submit a timely response in this matter. As a result, all reasonable inferences asserted in the Complaint will be deemed true.

Complainant, VWOA, is a New Jersey Corporation that has a principal place of business at 3800 Hamlin Road, Auburn Hills, MI 48326. Complainant is a United States subsidiary of Volkswagen Aktiengesellschaft ("VWAG"), a corporation organized under the laws of the Federal Republic of Germany. VWAG maintains its principal place of business in Wolfsburg, Federal Republic of Germany. Complainant and VWAG, manufacture and sell motor vehicles, parts, and accessories for motor vehicles. VWAG registered in the United States Patent and Trademark Office the letters "VW" and the VW logo as trademarks and service marks.

Through agreements, over four hundred concerns doing business at the retail level have been licensed to use VWAG's trademarks and service marks, including the VW mark and the VW logo, in connection with the sale, service and repair of Volkswagen Products.

Complainant requires all users of the VW mark to be a licensee of Complainant. Complainant requires all licensees at the retail level to identify its business as authorized by VWAG to sell, service and repair Volkswagen Products by employing VWAG's trademarks and service marks on its stationary, in its advertising, on its premises and on promotional materials.

Respondent registered the domain name bayareavw.com on February 2, 1999. Prior to the filing of this dispute, the domain name was being used to identify the site of "Bay Area VW", an automobile dealership specializing in the sale of Volkswagen automobiles. Respondent is not a licensee of Complainant, and has not been authorized by Complainant to use the VW marks in connection with its business.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The domain name at issue, bayareavw.com is confusingly similar to Complainant’s VW marks. The domain name consists of Complainant’s mark, VW, plus a geographic description of the location where Respondent’s business is located, "Bay Area". There are a substantial number of UDRP cases which have found that incorporating a registered trademark entirely into a domain name, regardless of what additional words or letters are added to the domain name, still results in a domain name that is confusingly similar to Complainant’s mark. The result should be the same regardless of whether the incorporated mark consists of two, five or ten letters and regardless of whether the additional word is generic or descriptive. See e.g. Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of domain names which incorporate the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

I conclude that the domain name bayareavw.com is confusingly similar to Complainant’s marks.

Under the UDRP, Respondent has an affirmative duty to come forward with evidence that demonstrates its rights or legitimate interest in the domain name at issue. However, just because a Respondent does not respond, Complainant is not relieved of its burden of proof on each and every element under ICANN Policy ¶ (4)(a). This panel must therefore inquire whether Respondent has any rights or legitimate interest in the domain name based on the evidence provided.

In this case, the evidence indicates that Respondent operates a business identified as "Bay Area VW". However, Complainant requires that all persons using its VW marks be licensees of Complainant, which Respondent is not. Therefore, it is difficult to see how Respondent’s use of the domain name can be "in connection with a bona fide offering of goods or services" when Respondent is not a legitimate licensee of Complainant. See e.g. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Additionally, it does not appear that Respondent is commonly known as www.bayareavw.com, so ICANN Policy 4(c)(ii) does not apply. Id. Finally, Respondent’s use of the domain name is clearly commercial, so Respondent cannot have any rights under ICANN Policy 4(c)(iii) which provides for rights if the use is noncommercial.

Therefore, in light of the evidence presented, I find that Respondent does not have any rights or legitimate interest in the domain name bayareavw.com.

The lack of a license from Complainant also dictates this panel’s findings regarding bad faith. There are numerous UDRP decisions that have wrestled with the implications of a license agreement on a domain name registration. See e.g. Eddie Bauer, Inc. v. Cole Sales Solutions, Inc., AF-0243 (e-Resolution July 21, 2000) (denying a complaint on the grounds that that the domain name "eddiebauercamping.com" was not registered and being used in bad faith because no commercial use was contemplated until a formal licensing agreement with Complainant was in place); But here, unlike in Eddie Bauer, the use of the domain name preceded the acquisition of a license agreement. See also Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding against Respondent based in part on the fact that Respondent never applied for a license or permission from the Complainant to use the trademarked name).

Also, Respondent, by registering and using the domain name bayareavw.com, is attempting to attract internet users to its web site by implying sponsorship, affiliation, or endorsement of Respondent, which does not exist, absent a license agreement. If Respondent wished to trade off the goodwill associated with Complainant’s mark, it should have sought a license, which it failed to do. Without such an agreement, internet users will assume that Complainant and Respondent are affiliated, and that Complainant endorses Respondent’s use of Complainant’s marks. Absent a license agreement, Respondent’s registration of a domain name containing Complainant’s VW mark and use of that domain name to attract internet users to its web site constitutes registration and use in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, bayareavw.com, be transferred from the Respondent to the Complainant.