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 Lance S. Kurosu, Ewa Beach, HI, USA ("Respondent").

The domain name at issue is "vwbeetle.com", registered with Network Solutions, Inc..

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

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 12, 2001; the Forum received a hard copy of the Complaint on March 14, 2001.

On March 15, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "vwbeetle.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 March 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@vwbeetle.com by e-mail.

A timely response was received and determined to be complete on March 30, 2001.

On April 13, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed James Alan Crary as Panelist.

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

A. Complainant

The Complainant is a New Jersey corporation and subsidiary of Volkswagen Aktiengesellschaft (VWAG) of the Federal Republic of Germany. Complainant manufactures and sells motor vehicles, parts, and accessories, collectively known as "Volkswagen Products". Over 10 million motor vehicles have been sold in the United States Market since 1949. U.S. sales exceed $22 billion dollars.

Complainant registered "VW" and "BEETLE" as trademarks and servicemarks. Complainant has expended large sums of money both in this country and abroad to advertise his products sold under the VW® and BEETLE®. The marks have appeared prominently in video, print, and outdoor advertising. By virtue of longstanding use of extensive and continuous advertising and strong consumer recognition of the VW registered mark and the BEETLE registered mark, which have become distinctive and famous marks. The disputed domain name vwbeetle.com causes confusion and deception in the minds of the general public by giving the impression it is a reference to the Complainant or it’s parent company.

The Complainant and it’s parent company license 400 concerns to use it’s trademarks and servicemarks including the VW and the BEETLE marks. Through it’s licensing agreements substantial efforts are exerted to control the nature and quality of the goods and services provided by licensees. The Complainant and its authorized dealers have earned substantial revenues from the services provided by Complainant under the VW and BEETLE marks resulting in substantial goodwill in the trademarks and servicemarks and for products and services sold under both the VW and BEETLE mark.

The vwbeetle.com domain name incorporates two registered marks VW and BEETLE. It is therefore identical to Complainant’s marks. Consumers are likely to mistakenly believe that Complainant’s or it’s parent company sponsored the website or that Respondent and Complainant are related companies.

The disputed domain name was registered April 30, 1998 without authorization or consent, long after Complainant’s adoption, first-use and registration of the VW and BEETLE marks.

Complainant asserted Respondent had no right or legitimate interest with respect to the disputed domain name. Internet users who access vwbeetle.com are redirected to the website AllDomains.com.

It was further asserted that Respondent was not commonly known by the name VW beetle nor was Respondent engaged in any business or other organization commonly known by that name. Trademark infringement and cybersquatting were alleged within meaning of the Lanham Act.

Bad faith registration and use were asserted. Complainant through it’s attorneys made numerous demands that Respondent cease and desist infringing and diluting the VW and BEETLE trademarks. Transfer of the domain name was also sought. Respondent was asked to contact Complainant and discuss transfer, but there was no response. This demonstrated that Respondent registered and was using the domain name in bad faith because it prevented Complainant from reflecting the marks in a corresponding domain name. It was also asserted that Respondent by using vwbeetle.com intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s registered mark as to the sole sponsorship, affiliation or endorsement of Respondent’s web site.

B. Respondent

Respondent describes himself as a big fan of the BEETLE. Respondent registered vwbeetle.com for future use as a non-profit car club for BEETLE lovers in the state of Hawaii. Presently Respondent is not doing anything with the vwbeetle.com name.

Respondent asserts that he never contacted Complainant offering to sell or rent the disputed domain name and had not attempted to profit from it.

Respondent describes himself as a middle-class person who earns $30,000 a year. He did not respond to Complainant’s letters out of fear. The letters were very threatening and intimidating. The letters threatened Respondent with lawsuits by a multi-billion dollar company.

Respondent asserted that he did not have any website that the disputed domain name directs people to. The company used by Respondent to register vwbeetle.com directs hits to the AllDomains.com website. Respondent asserted that he didn’t know how to stop domains from doing that but that he was willing to try and notify AllDomains.com in the effort to stop them from that practice.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

Respondent’s domain name incorporates two registered marks, "VW" and "beetle" in the vwbeetles.com. The disputed domain name is identical to Complainant’s registered marks. See Volkswagen of America, Inc. v. Compugraphic FA 96265 (Nat. Arb. Forum Jan. 16, 2001); America On-Line, Inc. the QTR Corp. FA 92016 (Nat. Arb. Forum Feb. 10, 2000). The evidence is clear that the disputed domain name was identical to two famous marks owned by the Complainant and thus the first element necessary to establish an abusive domain name registration is established by the Complainant.

The Respondent registered the disputed domain name in April 1998 but has not made any use of the domain name in any demonstratable preparations for use in connection with a bona fide offering of goods and services. The idea of forming a car club for Hawaiian Beetle lovers did not get beyond the idea stage according to the Respondent and therefore it cannot be said that there were demonstrable preparation to use the disputed domain name. Respondent has not pursued the idea.

The Respondent does not assert nor does any evidence in the record support a finding that Respondent was commonly known by the domain name.

While Respondent may assert that his intention was to form a non-profit car club, nothing has come of the idea so far, it was therefore concluded that there was no evidence of a legitimate noncommercial or fair use of the domain name.

The Panel could not discern from the record that the Complainant had other rights or legitimate interests in the domain name vwbeetle.com. There is a reference by Respondent to "little guy’s rights" but the Respondent did not set forth any particular right. This entitles the Panel to conclude that the Respondent has no such rights or legitimate interests. See Boeing Company 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 and no use of the domain names has been proved). The Panel finds that the Respondent has not rights to or legitimate interests in the domain name at issue.

A review of the record in this case satisfied the Panel that Complainant has established bad faith registration and use. It is noted by the Panel that the factors found in paragraph 4(b) of the Policy are nonexclusive and the Policy recognizes other circumstances can be evidence that a domain name was registered and is being used in bad faith. Respondent has not provided any evidence to rebut Complainant’s allegations that it registered the domain name in bad faith. Respondent using two of the Complainant’s famous marks VW and BEETLE without Complainant’s authorization or a licensing agreement was an act of bad faith. Any future use of the domain name would likely cause confusion with the Complainant and it’s marks. The concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within that concept. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPOFeb. 18, 2000).

The Panel concluded that in light of the long use and fame of the Complainant’s marks that Respondent’s conduct to date is evidence of bad faith for if Respondent had a good faith intent in registration and use of the domain name it would have responded to the various letters and other inquiries by the Complainant or actually use the domain name in some good faith manner CBS Broadcasting, Inc. v. LA-Twilight Zone D2000-0397 (WIPO June 19, 2000). Thus it was found by the Panel that Complainant had established the third element that the domain name has been registered and is being used in bad faith.

Pursuant to Paragraph 4(i) of the Policy, the Panel orders that the domain name vwbeetle.com be transferred to the Complainant.