Generic Top Level Domain Name (gTLD) Decisions

Complainant is Volkswagen of America, Inc., Auburn Hills, MI, USA ("Complainant") represented by Stephen J. Arpaia. Respondent is Walter Wieczorek, Kielce, Poland ("Respondent").

The domain name at issue is <volkswagen.tv> registered with dot TV.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Ralph Yachnin as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 8, 2001; the Forum received a hard copy of the Complaint on May 30, 2001.

On May 9, 2001, dot TV confirmed by e-mail to the Forum that the domain name <volkswagen.tv> is registered with dot TV and that Respondent is the current registrant of the name. dot TV has verified that Respondent is bound by the dot TV registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2001 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@volkswagen.tv 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.

On June 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Respondent.

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

A. Complainant

The <volkswagen.tv> domain name is confusingly similar to Complainant’s registered marks.

Respondent has no rights or legitimate interests in the <volkswagen.tv> domain name.

Respondent registered and used the <volkswagen.tv> domain name in bad faith.

B. Respondent

No response was received.

Since 1949, Complainant, Volkswagen of America, has manufactured and sold motor vehicles, parts, and accessories for motor vehicles. 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. Among other responsibilities, Complainant is charged with protecting trademarks associated with VWAG.

Complainant registered in the VOLKSWAGEN mark with the United States Patent and Trademark Office as a trademark and service mark. These registrations are in full force and effect, and incontestable under 15 U.S.C. § 1065.

Complainant has extensively employed and caused to be advertised and publicized throughout the world, including the United States, numerous trademarks and service marks, including the VOLKSWAGEN mark. Complainant was the first to adopt and use this mark as a trademark and service mark and Complainant is the owner of this mark.

For many years, Complainant has expended large sums of money in the United States and abroad in order to advertise its products. Over the past several years, Complainant expended millions of dollars advertising Volkswagen products sold under the registered VOLKSWAGEN mark.

The VOLKSWAGEN mark has appeared prominently in television, newspaper, magazine, outdoors billboard and Internet advertising in the United States and throughout the world. By virtue of the long-standing use, voluminous and continuous advertising and strong consumer recognition, the VOLKSWAGEN mark has become very distinctive and famous.

Since 1949, Complainant has manufactured and sold over 10 million motor vehicles in the United States under Complainant’s trademarks, including VOLKSWAGEN. Sales for Complainant’s products have exceeded $22 billion (US).

Respondent registered the <volkswagen.tv> domain name on June 16, 2000. Since its registration, Respondent has passively held the disputed domain name. Respondent was not licenesed or authorized by Complainant to register the <volkswagen.tv> domain name.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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 <volkswagen.tv> domain name is identical to Complainant’s famous VOLKSWAGEN mark. The addition of a country code top level domain (i.e., ".tv") is irrleveant for purposes of determinnig the identical nature or confusing similarity between Complainant’s VOLKSWAGEN mark and the disputed domain name. See World Wrestling Fed'n Entertainment, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that "[t]he addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent").

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <volkswagen.tv> domain name. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that "In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent’s registration and passive holding of the <volkswagen.tv> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i). See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that "…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy").

There is no evidence in the record, and Respondent has not come forward to establish that it is commonly known by the <volkswagen.tv> domain name, pursuant to Policy ¶ 4(c)(ii). See 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).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <volkswagen.tv> domain name pursuant to Policy ¶ 4(c)(iii), when Respondent is engaged in passive holding of the domain name. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <volkswagen.tv> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

Respondent’s passive holding of the disputed domain name evidences bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Given the fame and distinctiveness of Complainant’s VOLKSWAGEN mark, Respondent is said to be on notice of the existence of Complainant’s rights in the VOLKSWAGEN mark, thus evidencing bad faith. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been on notice of its existence).

Furthermore, bad faith is evidenced by the obvious connection the <volkswagen.tv> domain name has with the Complainant’s enterprise, as it incorporates Complainant’s famous VOLKSWAGEN mark in its entirety. Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name combined with the famousness of Complainant’s mark supports a finding of bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the "domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’"); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <volkswagen.tv> domain name be transferred from Respondent to Complainant.