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Volkswagen AG v. David’s Volkswagen Page [2004] GENDND 1104 (25 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. David’s Volkswagen Page

Case No. D2004-0498

1. The Parties

Complainant is Volkswagen AG, Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Germany.

The Respondent is David’s Volkswagen Page, Quesnel, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.org> is registered with Tucows, Inc., of Toronto, Ottawa, Canada.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2004. On July 8, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 9, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 16, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2004.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 12, 2004. 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

Complainant is the proprietor of a large number of trademarks worldwide. It is - inter alia - owner of the following registered trademarks “VOLKSWAGEN”:

- German trademark No. 621252, registered for former Classes 1-34 with priority as of February 21, 1949;

- Canadian trademark No. 0517602, registered for “Repair and Maintenance of motor vehicles, engines and accessories therefore; and engines for industrial purposes”, filed February 24, 1984;

- Canadian trademark No. 0218117, registered for “Automobiles, trucks, motors for motor vehicles, engines for motor vehicles and industrial purposes, motor vehicles, motor vehicle parts; motor vehicle accessories namely, radios, radio installation kits, batteries, brake fluid, windshield washer solvent, interior car warmers, engine oil heaters, brake shoes, seat covers, rubber mats, floor mats and hood covers” filed January 17, 1953;

- US trademark No. 71665739, registered for International Class 12, filed May 1954;

- International trademark under Madrid Agreement No. 263239, registered for classes 1, 3, 7, 8, 9, 11, 12, 17, 21, priority as of February 21, 1949, designated for over 25 contracting parties.

Complainant or affiliated companies run websites under domain names comprising the trademark VOLKSWAGEN, e.g. <volkswagen.de>, <volkswagen.ch>, <volkswagen.fr>.

Respondent registered the domain name <volkswagen.org> on June 5, 1997. The Register has confirmed that the UDRP applies.

On March 28, 2003, Complainant sent a cease and desist letter to Respondent. The letter sent by post was returned to sender, because the letter had not been claimed. Complainant sent another cease and desist letter by e-mail on May 15, 2003. Respondent answered by e-mail on May 22, 2003, stating that he had an agreement with Volkswagen of America’s lawyers in New York that the use of the .org domain name was within his rights and that the domain name was used for non-profit purposes. Complainant has submitted an e-mail of Ms. L. Scipione who - according to Complainant - works for Volkswagen of America, stating that Mr. Marshall had advised Volkswagen of America that Volkswagen AG Germany had allowed this site to link to its website a long time ago. Volkswagen of America then decided to close its file, according to Ms. Scipione’s email.

On June 20, 2003, Complainant sent another cease and desist letter to Respondent. On June 21, 2003, Respondent informed Complainant that he was puzzled about the contents of the e-mail of June 20, 2003. Respondent did not cancel or transfer its domain name.

5. Parties’ Contentions

A. Complainant

Complainant states that the domain name <volkswagen.org> is identical to the trademarks VOLKSWAGEN in which Complainant has rights. The existence of the .org generic top level domain does not mean, according to Complainant, that the domain name is not identical to the mark in which Complainant asserts rights.

Complainant further states that Respondent has no rights or legitimate interests to use the domain name. Respondent is not commonly known by the name Volkswagen nor did he claim to be commonly known by the name Volkswagen. According to the correspondence between the parties as well as to the WHOIS database, Respondent is - according to Complainant - represented by an individual named David Marshall.

Complainant further asserts that as far as Respondent claims to have permission for the registration or use of the domain name, this is incorrect. There was and still is no relationship between Complainant or any of its subsidiaries and Respondent. Neither is Respondent a licensee of Complainant nor did it give Respondent permission or consent to use the trademarks VOLKSWAGEN or to apply for any domain name incorporating this trademark. Respondent did not claim any rights in own service or trademarks VOLKSWAGEN, nor did he claim to be commonly known by this name. Accordingly, no trademark registrations or applications of Respondent can - according to Complainant - be found in the online databases of the OHIM, or the WIPO database for international trademark registrations or at the Canadian trademark office. Complainant submitted printouts of its researches.

Complainant further asserts that Respondent does not use nor is demonstrably preparing to use the domain name in connection with a bona fide offering of goods. When Respondent acquired the contested domain name, he knew of the trademark VOLKSWAGEN of Complainant, because this trademark is constantly highly promoted. Furthermore, Respondent provides content, dealing with Complainant and his products. Complainant is further of the opinion that Respondent cannot successfully claim to have planned to run a bona fide business under the disputed domain names, because the offering of goods or services under infringement of the trademarks of others can never be bona fide offering according to the Policy. Complainant states that without doubt any commercial or business use of the contested domain name infringes the trademark rights of Complainant taking into consideration the strong reputation of Complainant’s trademarks VOLKSWAGEN. This impossibility also argues against any legitimate interest Respondent could possibly have in the contested domain name. Complainant further states that contrary to his assertions, Respondent uses the domain name for business purposes: he offers a car for sale on the website and he promotes his company Fast Forward Automotive Inc.

In case the Panel should consider the use of the domain name as a non-commercial or fair use, according to Complainant such use is misleadingly diverting consumers given the worldwide fame of the trademarks VOLKSWAGEN of Complainant. If the Respondent’s website is merely considered as a fan site or similar, Complainant asserts that also fan sites do not constitute non-commercial or fair use, if the domain name does not include the faintest hint of the purpose of the website. The Respondent has, according to Complainant, ample opportunity to use other domain names for a fan page. It is not necessary to use Complainant’s trademark VOLKSWAGEN to post a fan page. The Complainant further states that a disclaimer placed on the bottom of the Respondent’s website does not indicate the Respondent’s good faith, because disclaimers are not always read or understood and potential customers may not notice or appreciate the Respondent’s disclaimer. More fundamentally, the Respondent’s disclaimer will not prevent a likelihood of confusion, because it is not part of the domain name itself.

Complainant further states that the domain name is registered and used in bad faith. The Respondent had constructive knowledge of the trademarks of Complainant when he registered the domain name <volkswagen.org> and he is - for commercial gain - attracting Internet users looking for Complainant to his website. This is misleading for the Internet users. Complainant further points out that the website of Respondent is sponsored by Fast Forward Automotive Inc.

Bad faith registration is proven because Respondent knew of Complainant’s trademarks when registering the domain name. Complainant’s trademark VOLKSWAGEN has a strong reputation given the worldwide business of Complainant. The contested domain name comprises Complainant’s entire trademark without any pre- or suffix. The registration of a well-known trademark of which Respondent must reasonably have been aware is, according to Complainant, in itself sufficient to prove bad faith. It is also relevant that Complainant operates websites under similar addresses, e.g. <volkswagen.de> offering its own products and goods.

Complainant states that it is not possible to conceive of any plausible actual or future active use of the domain name by Respondent that would not be illegitimate. The right to post a fan page (or similar web page) does not translate in the right of Respondent to identify himself as Complainant. Complainant asserts that it is further important that Respondent was, according to information provided by Volkswagen of America, also the previous owner of <volkswagen.net>. According to Complainant, this is sufficient to constitute a pattern of conduct according to Paragraph 4(b)(ii) UDRP. The fact that Respondent is no longer the owner further suggests that Respondent is ready to sell domain names to third parties in excess of his out-of-pocket costs.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <volkswagen.org> is identical or clearly confusingly similar to Complainant’s trademarks VOLKSWAGEN. The domain name incorporates the name “Volkswagen” with the suffix “.org”. It is clear that the public may think the domain name is somehow connected to the VOLKSWAGEN trademarks. The suffix “.org” is not sufficient to exclude the confusing similarity.

B. Rights or Legitimate Interests

On the basis of the statements and supporting evidence of Complainant, referred to under Section 5 above, the Panel concludes that Respondent does not have any rights or legitimate interest in the domain name <volkswagen.org>.

Under Paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or a legitimate interest to a domain name for the purpose of Article 4(a) (ii), inter alia, by providing evidence of any of the following circumstances:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

By not submitting a Response, Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain name.

Complainant has stated uncontested that it did not grant to Respondent any right (license) to use its trademark or to apply for the domain name <volkswagen.org>. The fact that Volkswagen of America may have acquiesced for some time in Respondent’s use of the domain name does not constitute a legitimate right or interest. First, Volkswagen of America is not the owner of the trademarks. Second, it appears that Volkswagen of America was misled by Respondent who alleged he had obtained permission from Complainant to use the Domain Name.

In view of the fact that Volkswagen is a famous trademark, Respondent’s use of the website - if and to the extent it offered goods or services - cannot be considered bona fide. Respondent has not demonstrated that it has been commonly known by the domain name <volkswagen.org>.

The Panel further finds that Respondent is not making a legitimate, non-commercial or fair use of <volkswagen.org>, if only because the website contains hyperlinks to Respondent’s website “www.fastforward.ca” where Respondent offers Volkswagen vehicle parts and accessories for sale.

In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interest in the domain name at issue.

C. Registered and Used in Bad Faith

In paragraph 4(b) (iv) it is stipulated that for the purpose of Paragraph 4(a) (iii) the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

“By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that these circumstances are present here.

It is clear from the contents of the website under the Domain Name that Respondent was aware of Complainant’s trademarks when he registered the domain name, as Respondent uses the website to inform the public about his appreciation for Volkswagen cars.

The use of the domain name <volkswagen.org> for a website which direct - through hyperlinks - internet users to a commercial website where Volkswagen products are sold, demonstrates that Respondent sought to attract business by confusing internet users as to the source, sponsorship, affiliation or endorsement of the website.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <volkswagen.org> be transferred to Complainant.

Wolter Wefers Bettink
Sole Panelist

Dated: August 26, 2004