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Volkswagen AG v. NovaNIC [2005] GENDND 197 (31 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. NovaNIC

Case No. D2005-0142

1. The Parties

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

The Respondent is NovaNIC, of Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.net> is registered with Tucows, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2005. On February 9, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 9, 2005, 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. 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 February 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

The Center appointed Isabelle Leroux as the sole panelist in this matter on March 17, 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

The Complainant is Volkswagen AG, a well known company which is one of the world leading car manufacturers.

The name and trademark VOLKSWAGEN is well known all over the world and the Complainant’s cars are sold internationally under the famous VOLKSWAGEN brand.

The Complainant owns various VOLKSWAGEN trademarks which include national registrations, for example in the republic of Korea, where the Respondent is located, and international registrations, the earliest dated from 1949.

In particular, the Complainant owns the following VOLKSWAGEN trademarks:

- International trademark N°. 263239 registered for classes 1, 3, 7, 8, 9, 11, 12, 17, and 21 with a priority date of February 21, 1949, designated for over 25 countries;

- The republic of Korean trademark N°75486 registered on February 3, 1981, to cover products in class 12 (national 37);

- The republic of Korean trademark N°474369, registered on July 31, 2000, to cover products in class 9;

- The republic of Korean trademark N°467308 registered on March 28, 2000, to cover products in class 34;

- The republic of Korean trademark N°61102 registered on May 16, 2000, to cover services in class 42.

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

The Respondent is Novanic and the administrative contact is Mr. Kim Sooyong. The domain name was registered on December 12, 2000.

The previous domain name holder was Arisu Tech and the administrative contact was also Mr. Kim Sooyong.

On March 28, 2003, the Complainant sent to Mr. Kim Sooyong (the administrative contact of the domain name <volkswagen.net> owned by Arisu Tech) a cease and desist letter. The letter sent by post was returned to the sender because the letter had not been claimed.

On May 15, 2003, the Complainant sent to him another cease and desist letter by email. On May 16, 2003, Mr. Kim Sooyong replied to that letter stating that he legally registered the domain through ICANN on December 12, 2000, since he wanted to have a local no-profit “the national vehicle” community website, and the word Volkswagen is very generic and widely used in various fields.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name <volkswagen.net> is identical to the trademarks VOLKSWAGEN in which the Complainant has prior rights. The existence of the .net top-level-domain in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

The Complainant states that the Respondent has no rights or legitimate interests to use the disputed domain name. The Respondent is not commonly known to Volkswagen nor did he claim to be known by Volkswagen.

The Complainant also asserts that there is no relationship between the Complainant or any of its subsidiaries and the Respondent. Neither the Respondent is a licensee of the Complainant nor otherwise permission or consent has been granted to the Respondent to use the trademarks VOLKSWAGEN or to apply for any domain name incorporating this trademark.

The Complainant further states that it does not use nor prepare to use the domain name in connection with a bona fide offering of goods. When the Respondent acquired the disputed domain name, he knew of the trademark “VOLKSWAGEN” of the Complainant, because this trademark has been constantly highly promoted and is therefore known to the Respondent. According to the Complainant, the Respondent could not have successfully planned to run a bona fide business under the disputed domain names, because the offering goods or services under infringement of the trademarks of others can never be bona fide offering according to the Policy. The Complainant states that without doubt any commercial or business use of the disputed domain name infringes the trademark rights of the Complainant taking in consideration the strong reputation of the Complainant’s trademarks “VOLKSWAGEN”. The Complainant further states that contrary to its assertions, the Respondent uses the domain name for business purpose, since the domain name leads to a web page which provides a service described as “Intellectual Property Management System”.

According to the Complainant, the true intention of the Respondent is to sell the domain name <volkswagen.net>. As a matter of fact, the previous holder, Arisu Tech, operates the website “www.adomain.com”, a domain name market place. The fact that the content of the website under “www.volskwagen.net” is partially linked to “www.adomain.com” points out that the domain name <volkswagen.net> also belongs to the Respondent and that it is planning to sell it.

In case the Panel should consider the use of the domain name as non commercial or fair use, such use is misleading diverting consumers given the worldwide frame of the trademarks VOLKSWAGEN of the Complainant. Furthermore, the Respondent ascertained plans to set up a community website devoted to the “national vehicle” but until the filing date of this Complaint, Respondent has not begun to implement such community website. The Complainant claims that the Respondent has ample opportunity to use other domain name for the alleged community page about “national vehicles”. Furthermore, the Complainant asserts that the trademark “VOLKSWAGEN” is not a generic work in the Korean, English and German language.

Complainant further states that the domain name is registered and used in bad faith. The Respondent had constructive knowledge of the trademarks of the Complainant when he registered the domain name <volkswagen.net> and he tries to sell the Domain Name for a value exceeding that of his out of pocket costs to sell it to the Complainant or a competitor. The Complainant also asserts that the Respondent has offered the domain name for sales albeit not expressively demanding a certain purchase price. Respondent answered to Complainant’s cease and desist letter by offering the domain name for sale by pointing out the time and costs required for a court proceeding and to his “still” existing interest to negotiate wit the Complainant. By pointing out to the costs of the proceeding of alleged US$20,000 to 40,000 the Respondent also made clear what his expectations in an eventual purchase price were. The Complainant states that the Respondent is identical to Arisu Tech which runs a domain name market place, i.e. offers to acquire and sell domain names. The Complainant considers that the Respondent did not develop the alleged non commercial community website so that the website might also be considered as inactive use, which amount to bad faith.

The Complainant states that it is not possible to conceive any plausible actual or future active use of the domain name by Respondent that would not be illegitimate.

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 as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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 seems applicable”.

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and,

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and is used in bad faith.

A: Identical or Confusingly Similar

The domain name <volkswagen.net> is identical to Complainant’s trademarks VOLKSWAGEN.

As a matter of fact, the domain name is composed of the trademark VOLKSWAGEN and the generic Top Level Domain “.net”.

And the presence of the “.net” generic top-level-domain in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights (Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Therefore, the Panel finds that the Complainant has proven that the domain name in dispute is identical to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(c) of the Policy.

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights and interests in a disputed domain name by showing:

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

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

Though the Respondent has not filed any Response to the Complaint, he claims in an email dated May 16, 2003 that he “wants to have a local no-profit “ national vehicle” (alias:Volkswagen) community web site”. Furthermore, the respondent claimed that “the word “Volkswagen” was very generic and widely used in various fields”.

The Panel finds that the trademark was known to the Respondent when he acquired the domain name.

The Panel also finds that the Respondent has not been commonly known to the Complainant, since there has never been any relationship between them.

The fact that the website leads to a web page contains the following sentence “NOVANIC Intellecual Property Management System” does not establish that the disputed domain name is used with respect to a no-profit community website.

As a matter of fact, the Complainant has established that the Respondent was highly connected to the website “www.adomain.com, which offers to acquire and sell domain names since:

- the domain name <adomain.com> appears in the source of the domain <volkswagen.net>;

- the domain name <adomain.com> is owned by Arisu Tech and the administrative contact is Kim Sooyong;

- Arisu Tech is the previous holder of the domain name <volkswagen.net> and Kim Sooyong is the current administrative contact of the disputed domain name.

Furthermore, the access to the content of the website is limited since a password is required.

The Panel also finds that the Complainant has demonstrated that the trademark VOLKSWAGEN is not a generic term in the Korean (Respondent’s language”) or English language (language of the proceedings).

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

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

In that case, the Panel finds that the Complainant trademark is not only distinctive but also largely used and well-known all over the World. Therefore, the Panel considers that the Respondent knew the trademarks of the Complainant when acquiring the domain name.

The Panel also finds that the Respondent has offered, though not expressively the domain name for sale.

As a matter of fact, the Respondent pointed out the time and cost required for a court proceeding before stating that he was still interested in negotiating with the Respondent, since in the response to the cease and desist letter it states that: “We will also to our best to protect our domain name (…). And it will cost you about US$20.000 to US$ 40,000 for the action. Fortunately, we are still interested in some negotiating with you”.

Furthermore, in establishing the relationship between the Respondent and the previous holder Arisu Tech who runs a domain market place with the domain name <adomain.com>, the Complainant has established that the Respondent registered the disputed domain name with the intention to sell it and not, as claimed, to build up a local no-profit community website.

And it is clear from the content of the website “www.volkswagen.net” that the Respondent has not build up its local no-profit community website since it refers to the “NOVANIC Intellecutal Property Management System (…) Enter authorized personnal only” and the access to the content requires a password.

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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.net> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist

Dated: March 31, 2005