Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Volkswagen of America, Inc., Auburn Hills, MI, USA ("Complainant") represented by Stephen J. Arpaia. The Respondent is Caroline C. Kennedy Compugraphic, Send, Woking, UK ("Respondent").

The domain name at issue is "vwbeetles.com" registered with Easyspace.com.

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

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 12, 2000; the Forum received a hard copy of the Complaint on December 18, 2000.

On December 12, 2000, Easyspace.com confirmed by e-mail to the Forum that the domain name "vwbeetles.com" is registered with Easyspace.com and that the Respondent is the current registrant of the name. Easyspace.com has verified that Respondent is bound by the Easyspace.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@vwbeetles.com by e-mail.

Having received no timely 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. However, it should be noted at this point that in spite of the advice to the Respondent that the Response was due by no later than January 8, 2001, a Response was not received until seven days after the default date, to wit, January 15, 2001. Hence, although not required to, because of the equities involved, the consequences of a decision in favor of either party, and also in the interests of justice, the Response was thoroughly examined and taken into consideration. Thereupon it was determined that notwithstanding its untimeliness, the contents of the Response would not have altered the decision hereinafter set forth.

On January 15, 2001, pursuant to Complainantís request to have the dispute decided by a One 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 Forumís 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

Complainant alleges Respondentís domain name, vwbeetles.com, is identical to Complainantís registered marks. Also, Respondentís use of the domain name causes confusion in the minds of the trade, consumers, and the public by giving the mistaken impression that Respondentís domain name is in some way associated with Complainantís famous mark.

Further, Respondent has no rights or legitimate interests in the domain name at issue because it is not commonly known by the domain name, nor is Respondent using the domain name in connection with a bona fide use.

And finally, as evidenced in the complaint, Respondent registered and is using the domain name in bad faith by attempting to sell the domain name at auction to the highest bidder via GreatDomain.com; and by using the domain name intentionally to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainantís famous marks as to the source, sponsorship, affiliation, or endorsement of Respondentís web site.

B. Respondent

Respondent has failed to submit a response in this matter.

Complainant, Volkswagen of America, Inc., is a New Jersey Corporation that maintains its principle place of business in Auburn Hills, Michigan. Complainant is a United States subsidiary of a German corporation. Complainant manufactures and sells motor vehicles, parts, and accessories. Since 1949, Complainantís company has manufactured over 10 million motor vehicles; and sales for its Volkswagen products exceed $22 billion. Complainant owns trade and service mark registrations for "VW" and "BEETLE." Complainantís marks have become well known to the general public through various, and continuous, advertising campaigns.

Complainant does business at wholesale as well as retail levels via licensing agreements with hundreds of dealers. Complainant exercises great care in the selection of licensees, and substantial effort is invested to control the nature and quality of goods and services that are associated with its famous mark.

Respondent, Compugraphic, is in no way connected with Complainantís company and has not been granted any authority to utilize Complainantís registered marks. Respondent registered the domain name in question in June of 2000, many years after Complainants first use of the mark.

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.

According to the UDRP, Complainant must show that it has rights in a mark, and that the domain name at issue is identical or confusingly similar to that mark.

Here, Complainantís rights are evidenced by its registered marks VW and BEETLE. Respondentís domain name, vwbeetles.com, is comprised of the Complainantís famous marks, except for the addition of the letter "s," and is therefore found to be identical to Complainantís marks. Policy  4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR) (finding that "kelsonmd.com" is identical or confusingly similar to Complainantís federally registered service mark, "Kelson").

Also, Respondentís domain name is so confusingly similar, a reasonable Internet user would assume that the Respondentís domain name is somehow affiliated with the Complainantís well-established mark. See Treeforms, Inc. v. Cayne Industrial Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainantís web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Accordingly, the Panel finds the Respondentís domain name is identical and confusingly similar to the Complainantís famous mark.

Complainantís contentions are well founded. Respondent is not commonly known by the domain name at issue, nor is Respondent using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Policy  4(c)(i)-(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainantís marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Moreover, Respondent has asserted no rights or legitimate interests in the domain name at issue. Consequently, Respondentís failure to show evidence sufficient to refute Complainantís contentions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name in question. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

The Panel finds that Respondent has no rights to or legitimate interests in the domain name at issue.

Complainant has demonstrated that Respondent has registered its domain name primarily for the purpose of auctioning it off to the highest bidder, for an amount substantially higher than Respondentís out-of-pocket costs directly associated with the domain name. See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also World Wrestling Fedín. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

Complainant has also shown Respondent registered the domain name intentionally attempting to create a likelihood of confusion between its domain name and Complainantís famous mark. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainantís mark by offering the same chat services via his web-site as the Complainant).

Therefore, the Panel finds the Respondent has registered and used the domain name at issue in bad faith.

Having established all three elements required under the ICANN Policy, the Panel concludes that relief in the form of a transfer of the domain name shall be and is hereby granted.

Accordingly, it is Ordered that the domain name vwbeetles.com be transferred from Respondent to Complainant.