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Volkswagen AG v. Digi Real Estate Foundation [2005] GENDND 1765 (25 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Digi Real Estate Foundation

Case No. D2005-0952

1. The Parties

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

The Respondent is Digi Real Estate Foundation, of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <volkswagn.com> is registered with Le Grand Nom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2005. On September 7, 2005, the Center transmitted by email to Le Grand Nom, Inc., a request for registrar verification in connection with the domain name at issue. A deficiency was notified to the Complainant on September 12, 2005, and remedied by an Amendment to the Complaint on September 19, 2005. In correspondence finalized on September 19, 2005, Le Grand Nom, Inc., 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, 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 September 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2005.

The Center appointed Dr. Clive N.A. Trotman as the Sole Panelist in this matter on October 12, 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.

4. Factual Background

Volkswagen AG is one of the world’s most famous manufacturers of vehicles popularly known under the trademark VOLKSWAGEN and also as VW.

The VOLKSWAGEN trademark dates to at least as early as German trademark No. 621252 dated February 21, 1949. Other VOLKSWAGEN trademarks include German trademark No. 39800185.5, January 2, 1998; US trademark No. 71665739, May 1954; international trademark under the Madrid Agreement No. 263239 February 21, 1949; Panama trademark No. 25.459, November 1980; international trademark No. 702679, July 1, 1998; Community trademark No. 000703702, December 12, 1997.

Volkswagen production has included 21.5 million Beetles, 23 million Golfs, 13 million Passats and 9 million Polos among a range of 41 models including cars, buses and trucks. The Group’s sales revenue worldwide was more than 1.62 billion Euros in 2004, and the Group employed about 343,000 people.

The Complainant or affiliated companies hold domain names that include Complainant’s trademark including <volkswagen.com>, <volkswagen.ch>, <volkswagen.de> and <volkswagen.fr>.

The Complainant has anticipated the needs of users who might mistype its domain names by also registering for purposes of redirection domain names containing typographical errors such as <volkswagn.de> and <volswagen.de>.

The disputed domain name <volkswagn.com> appears to have been registered by the Respondent on February 3, 2005.

5. Parties’ Contentions

A. Complainant

The contentions of the Complainant include that the dispute is properly within the scope of the Policy. The Registration Agreement, pursuant to which the domain name being the subject of this Complaint was registered, incorporates the Policy by reference.

The disputed domain name <volkswagn.com> is confusingly similar and almost identical to the trademark VOLKSWAGEN in which the Complainant has rights.

The disputed domain name is designed and intended to mislead and capture Internet users who make a typographical mistake by omitting the single letter “e” when typing the Complainant’s legitimate domain name. Not even the pronunciation of the Complainant’s trademark name is significantly changed by the omission of the letter “e”.

The Respondent has never had any rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the trademark. The Respondent has not used the disputed domain name for a bona fide offering of goods or services, has not been commonly known by the domain name and is not making any legitimate noncommercial or fair use of it.

The Respondent’s registration and use of the domain name is in bad faith in the terms of the Policy. The Respondent’s purpose is to divert users either directly or indirectly to various other websites, many of which advertise products or services related to cars and vehicles, for the commercial purpose of enabling the Respondent to derive revenue. Some of the diversionary websites are related to trademarks other than VOLKSWAGEN and to competitors of the Complainant.

Complainant attempted to redress the issue by sending Cease and Desist letters to the Respondent by registered post on February 9 and March 17, 2005, and by email on March 2 and March 17, 2005. There has been no response. The contact details provided by the Respondent appear to be incomplete and obviously wrong, including a non-Panama area code.

The remedy requested by the Complainant is that the disputed domain name <volkswagn.com> be transferred to the Complainant.

B. Respondent

No formal Response has been received and the Respondent has not contested the allegations of the Complainant.

6. Discussion and Findings

A. Jurisdiction of Administrative Panel

Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

B. Whether the Domain Name is Identical or Confusingly Similar to a Trademark

The disputed domain name <volkswagn.com> as registered by the Respondent is essentially identical to the Complainant’s well known registered trademark VOLKSWAGEN, except for the omission of a letter “e”. Pronunciation of the disputed domain name is indistinguishable from that of the Complainant’s trademark. The generic top level directory designation “.com” is of no consequence for the finding of confusing similarity. The Panel finds the disputed domain name <volkswagn.com> to be confusingly similar to the Complainant’s trademark in terms of paragraph 4(a)(i) of the Policy.

C. Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name

The Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. This requires the proving of a negative. Nevertheless, the Complainant certifies and provides evidence that it has registered and used the trademark VOLKSWAGEN in many countries world-wide since at least as early as 1949. The Complainant has not licensed the Respondent to use the trademark nor entered into any relationship that could give the Respondent any right to use the trademark. In accordance with established jurisprudence in this context, a prima facie case has been made out to the effect that the Respondent does not have any rights or legitimate interests in the domain name.

The Respondent has not submitted any Response. Thus the Respondent has not refuted the Complainant’s claim in terms of paragraph 4(c) of the Policy by attempting to establish rights or legitimate interests in respect of the domain name. The Respondent does not claim to have used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or to have been commonly known by the domain name; or to have made any legitimate noncommercial or fair use of the domain name. The Respondent has not demonstrated a legitimate interest in the domain name in any other way. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.

D. Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Of these, paragraph 4(b)(iv) provides for a finding of bad faith where:

“by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the 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 Respondent’s means of entrapping visitors to the website of the disputed domain name was to rely on the expectation that a proportion of those Internet users who sought the Complainant’s trademark name would inadvertently omit to type the letter “e” that forms the difference between the disputed domain name and the Complainant’s trademark. The Respondent’s device is known as “typo-squatting” or “typo-piracy” and has been held to be evidence of bad faith in numerous precedent cases (e.g., Medco Health Solutions, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0216, against the same Respondent as in the present case; Adidas-Salomon AG v. Legueret Dominique, WIPO Case No. D2002-0107; Travelprice Com v. Pissin Chicken Inc., WIPO Case No. D2002-0129; Nike, Inc. v. Alex Nike, WIPO Case No. D2001-1115; Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256; InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069).

Having been drawn to the Respondent’s website, visitors were further enticed to visit a variety of other websites offering competing goods and services. It may reasonably be inferred that from this activity the Respondent directly or indirectly derived a financial revenue stream. Thus, the Respondent’s method was to derive financial gain from the goodwill embodied in the Complainant’s trademark name when it was innocently mistyped. The Panel finds bad faith proven in the terms of paragraph 4(b)(iv) of the Policy.

The circumstances listed in paragraphs 4(b)(i) - (iv) of the Policy are without limitation and bad faith may be found alternatively. The Complainant’s trademark VOLKSWAGEN, irrespective of its origin comprising common words, has long ago acquired the status of a special name. The trademark is famous worldwide and the Respondent cannot reasonably have been unaware of it. The Registration of a well known trademark of which the Respondent must have been aware is sufficient to amount to bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

Bad faith can further be inferred from the Respondent’s failure to receive or reply to the Complainant’s Cease and Desist letters sent by post on February 9 and March 17, 2005, and by email on March 2 and March 17, 2005 (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632; Encyclopaedia Britannica, Inc. v. John Zuccarini et al., WIPO Case No. D2000-0330). The evident ineffectiveness of the contact details provided and such inconsistencies as the non-Panama area code indicate that they were intentionally misleading. The provision of false or misleading contact information by a Respondent has consistently been held to be an indication of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250).

In summary, as concluded in 6.3 above the disputed domain name is confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy. As concluded in 6.5 above, the Respondent has no rights or legitimate interests in the domain name in the terms of paragraph 4(a)(ii) of the Policy. As concluded in 6.8, 6.9 and 6.10 above, the Respondent has registered and is using the domain name in bad faith in the terms of paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by paragraph 4(a) of the Policy and accordingly the Administrative Panel decides for the Complainant.

7. Decision

The Decision of the Administrative Panel is that the disputed domain name <volkswagn.com> is confusingly similar to the trademark VOLKSWAGEN in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. 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 <volkswagn.com> be transferred to the Complainant.

Dr. Clive N. A. Trotman
Sole Panelist

Dated: October 25, 2005