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Volkswagen Aktiengesellschaft v. LaPorte Holdings [2005] GENDND 1648 (5 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen Aktiengesellschaft v. LaPorte Holdings

Case No. D2005-0780

1. The Parties

The Complainant is Volkswagen Aktiengesellschaft, Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Berlin, Germany.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <vwlt.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2005. On July 21, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 21, 2005, Moniker Online Services, LLC 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. The Center verified that 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 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2005.

The Center appointed Dr. Katalin Szamosi as the sole panelist in this matter on August 24, 2005. 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.

The language of the administrative proceeding is English.

4. Factual Background

The Complainant claims to be one of the world’s leading car-manufacturers and that cars of the Complainant are sold worldwide. The Complainant claims that it is commonly known as VW, an abbreviation used from the very beginning of the Complainant’s enterprise history.

The Complainant claims to be the registered owner of a number of trademarks for VW and LT worldwide.

The domain name <vwlt.com> was registered by Ling Shun Sing, a Chinese private individual on October 25, 2004, and was subsequently transferred to the Respondent.

On January 20, 2005, and on February 8, 2005, the Complainant sent cease and desist letters to Ling Shun Shing via registered mail and the latter also via e-mail. The letters were enclosed in the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the said domain name <vwlt.com> is nearly identical or confusingly similar to the trademarks in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the said domain name; and that the domain name was registered in and is being used in bad faith. The Complainant has requested the Administrative Panel to direct that the said domain name be transferred to the Complainant.

The Complainant claims that the said domain <vwlt.com> is a combination of the trademarks VW and LT, thus the domain name <vwlt.com> consists of two terms being identical to trademarks of the Complainant and similar to its trademarks LT 28, LT 35 and LT 46, which represents absorption of identical trademarks or at least confusing similarity to the embodied trademarks.

The Complainant argues that domain names comprising more than one trademark are at least confusingly similar to all integrated trademarks and cites several cases to supports its standpoint. See, for example, DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222.

The Complainant also claims that the trademark VW is famous and well-known worldwide. Furthermore, the danger of confusion is increased by the Complainant’s legitimate use of similar domain names like <vwlt.de>.

The Complainant argues that the Respondent and its predecessor are both well-known cybersquatters and their conduct in this case resembles their pattern of behaviour in previous cases. The Complainant refers to several cases to support this allegation.

The Complainant also argues that there is evidence that the Respondent and Ling Shun Shing are either different designations for the same person or Ling Shun Shing and the Respondent collaborate in a cybersquatting network and that such pattern of conduct does not constitute a legitimate interest in the domain name. The Complainant argues that the evidence is as follows: no recent update to the Whois database despite an alleged change in ownership; no change in name servers but in the displayed website; former cybersquatting with the same pattern of conduct (transfer from Ling Shun Shing to LaPorte Holdings) numerous UDRP proceedings against both the former registrant Ling Shun Shing and the Respondent LaPorte Holdings.

Complainant also argues that there was, and still is, no relationship between the Complainant, or any of its subsidiaries, and the Respondent, or Ling Shun Shing, and that no trademark registrations or applications of the Respondent have been found in the online databases of the OHIM, WIPO, USTPO or Madrid Express databases for international trademark registrations, and finally that the Respondent did not claim it held any trademark or other rights.

The Complainant argues that there were no demonstrable preparations for the use of the domain name <vwlt.com> in connection with a bona fide offering of goods before notice of the present dispute. The Respondent is neither using nor demonstrably preparing to use the disputed domain names for a bona fide business. The Complainant claims that the only use of the disputed domain name was the Respondent’s predecessor’s exploitation of the domain name in connection with sponsored links and that the website is inactive at the moment.

The Complainant argues that neither inactive use nor the use of famous trademarks to generate revenues by sponsored links are bona fide businesses under the Policy.

The Complainant also states that the Respondent offers the domain name <vwlt.com> for sale at the Whois database of the Respondent’s provider, where clicking a link leads to a website offering the possibility to bid on the domain name for at least 400 United States dollars. The Complainant argues that whenever a domain name identical to or incorporating a well-known or even famous trademark is offered for lease or sale, such offer is entirely inconsistent with any right or legitimate interest of the Respondent.

The Complainant also argues that when the Respondent acquired the contested domain name it surely knew of the VW trademark of the Complainant, because it is world famous, and that the use of the domain name at issue for a bona fide business is generally impossible given the worldwide reputation of the Complainant’s trademark.

The Complainant argues that the Respondent is not commonly known by <vwlt.com>, VW or VW LT and that no non-commercial or fair use of the domain name by the Respondent is cognizable in this case.

The Complainant argues that the strongest indication of bad faith registration and use of the domain name by the Respondent is the fact that the Respondent as well as its predecessor are both well-known cybersquatters. The Complainant claims that the Respondent has been party to at least 27 UDRP proceedings, all of which have been decided in favour of the respective Complainants. In all cases the Respondent held registered domain names either comprising or being similar to trademarks of the Complainants (either in combination with generic words or incorporating misspelt trademarks). The Complainant also claims that in several UDRP proceedings the Respondent has acted under the same pattern of conduct together with Ling Shun Shing or Horoshiy Inc. and acquired the domain names from them after they had received cease and desist letters. The Respondent’s pattern of conduct is professional cybersquatting and fulfils paragraph 4(b)(ii) of the Policy.

The Complainant also argues that the domain name <vwlt.com> is offered for sale to the general public in the Whois-database and the Respondent has engaged in the business of domain trading to a great extent.

The Complainant claims that the Respondent acquired the domain name from Ling Shun Shing right after the Complainant sent a cease and desist letter to the former registrant.

The Complainant refers to previous cases (Arai Helmet Americas, Inc. v. LaPorte Holdings, Inc, WIPO Case No. D2004-1027 and Société BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342) and claims that the Respondent and Ling Shun Shing cooperated in the same way in these cases.

The Complainant claims that both the Respondent and its predecessor must have been aware of the Complainant’s trademarks when they registered or acquired the domain name and claims that in situations where the Respondent “knew or should have known” of the registration and use of the trademarks of the Complainant prior to registering the domain name, bad faith should be ascertained.

The Complainant argues that the “transfer” of the domain name to the Respondent was intended to prevent the Complainant from enforcing its rights, and that this shows that the Respondent was acting in bad faith when it registered the domain name. The Complainant claims that such manoeuvre is itself sufficient to evidence bad faith and refers to Société Francaise du Raiotéléphone – SFR v. LaPorte Holdings, WIPO Case No. D2004-0926.

Finally, the Complainant claims that the domain name is inactive and that inactivity indicates bad faith, especially when a legitimate interest of the Respondent is neither cognizable nor conceivable.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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; and

(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.

A. Identical or Confusingly Similar

Based on the above, the first question that has to be decided by the Panel is whether the domain name in question is identical or confusingly similar to the Complainant’s trademarks. From the submitted documents, it can be established that the Complainant has several trademarks for VW and LT.

Consequently, the decisive question is whether a domain name incorporating two trademarks of the same owner is identical or confusingly similar to the trademarks.

With reference to the cases DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222 and Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118, the standpoint of the Panel is that the contested domain name shall be considered confusingly similar to the trademarks in which the Complainant has rights.

This is particularly true due to that fact that the trademark VW, which constitutes the first and dominant element of the domain in question, is famous and well-known worldwide. Consequently, the Panel is of the opinion that the danger of confusion is increased by the well-known character of the Complainant’s VW trademark.

Based on the above, the prerequisites of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

The Panel refers to the case Europay International S.A. v. Eurocard.com, Eurocard.org, and Chad Folkening, WIPO Case No. D2000-0173 and accepts that it is difficult for any complainant to prove beyond a shadow of doubt that a respondent has no rights or legitimate interests in a domain name, since for the most part, that information is known to and within the control of the Respondent. Consequently, the burden on the Complainant in respect of this element must be, by necessity, light.

The Panel also refers to Do The Hustle, LLC v Tropic Web, WIPO Case No. D2000-0624 and accepts that once the Complainant has asserted that the Respondent has no rights or legitimate interests, the burden of proof shifts to the Respondent.

The Panel is of the opinion that the arguments and evidence presented by the Complainant have established a prima facie case that the Respondent has no rights or legitimate interests in the domain name <vwlt.com>.

First, the Panel accepts that there is evidence that the Respondent and Ling Shun Shing may be either different designations for the same person or Ling Shun Shing and the Respondent could be collaborating in a cybersquatting network. Such conduct does obviously not constitute a legitimate interest in the domain name. The Panel wishes to note that each case must be assessed individually and in light of the individual facts of the case. However, the behavior of the Respondent and Ling Shun Shing as set forth by the Complainant is sufficient to assert that the Respondent has no rights or legitimate interests in the domain name. In the absence of any counterstatement by the Respondent, the Panel has no objections to accepting the arguments of the Complainant.

Second, the Panel accepts that the Respondent is not commonly known by the domain name, pursuant to paragraph 4(c)(ii) of the Policy.

Third, the Panel accepts that the Respondent is neither using nor demonstrably preparing to use the disputed domain name for a bona fide business as neither inactive use nor the use of famous trademarks to generate revenue by linking the domain name to sponsored links are bona fide businesses pursuant to paragraph 4(c) of the Policy.

Based on the above, the prerequisites of paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

The Panel accepts that it is an indication of bad faith registration and use of the domain name by the Respondent that the Respondent is a well-known cybersquatter. The Panel is of the opinion that the Respondent’s pattern of conduct falls within paragraph 4(b)(ii) of the Policy.

Furthermore, the Panel is of the opinion that the fact that the domain name <vwlt.com> is offered for sale to the general public in the Whois-database and that the Respondent has engaged in the business of domain trading to a great extent is evidence of bad faith pursuant to paragraph 4(b)(i) of the Policy.

The Panel accepts that the trademark VW is well-known. Consequently, the Respondent “must knew or should have known” of the Complainant’s trademarks, when it registered the domain name in question. According to the opinion of the Panel, this is evidence of bad faith especially in light of further circumstances of the case, such as the lack of any legitimate interest of the Respondent and the inactivity of the domain.

Based on the above, the prerequisites of paragraph 4(a)(iii) of the Policy are fulfilled.

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 <vwlt.com> be transferred to the Complainant.

Katalin Szamosi
Sole Panelist

Dated: September 5, 2005