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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Aktiengesellschaft v. MapleOne Solutions
Case No. D2003-0326
1. The Parties
The Complainant is Volkswagen Aktiengesellschaft of Germany with a contact address of Ontario, Canada, represented by Sim, Hughes, Ashton & McKay LLP of Toronto, Ontario, Canada.
The Respondent is MapleOne Solutions, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <guelphvw.com> ("the domain name") is registered with Tucows, Inc. of Toronto, Ontario, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2003. On April 28, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name. On the following day, the Registrar 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 May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2003. A Response was filed with the Center on May 21, 2003. The Respondent submitted additional filings on May 23 and May 28, 2003.
The Center appointed Daniel J. Gervais as the Sole Panelist in this matter on June 11, 2003. 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.
As noted above, the Respondent submitted supplemental filings. Because the supplemental filings were received late and have little if any bearing on the outcome, the Panel will disregard that filing and the Complainant’s response by email.
4. Factual Background
The Complainant is the owner of Canadian trademark registration UCA44707 for the mark "VW." This mark was registered in Canada on February 21, 1953, in association with wares described as (1) automobiles, trucks, motors for motor vehicles, engines for motor vehicles, engines for motor vehicles and industrial purposes, motor vehicle parts; (2) 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. The Complainant also is the owner of Canadian certification mark TMA 297,625, registered in Canada on November 30, 1984, based on use in Canada since August 1952. This mark is registered in association with services described as repair and maintenance of motor vehicles, engines and accessories therefore, and engines for industrial purposes. Volkswagen Canada Inc. has been licensed by the Complainant to use the VW trademark in Canada, and sublicense it to a network of dealers across Canada and Volkswagen Canada has sublicensed the VW trademark to 150 authorized Volkswagen dealers across Canada. The VW trademark has been used consistently and prominently across Canada for over 50 years and may be considered well known in Canada.
After receiving a cease-and-desist letter from the Complainant’s attorneys, the content of the "www.guelphvw.com" website was changed to refer to "Guelph Versatile Wheels." The site indicated that "GVW has mag wheels available for most makes of Exotic Cars." The site was subsequently changed to "Guelph Vision Works." As of April 8, 2003, the "www.guelphvw.com" site featured an opening page showing a front view of what the Complainant believes is a Mercedes vehicle (the image has been modified to remove the Mercedes trademarks and logos).
Currently the domain name resolves to "www.MBcanada.com", a site includes extensive discussion groups devoted to Mercedes automobiles, a competitor of the Complainant.
5. Parties’ Contentions
The domain name is confusingly similar to Volkswagen’s VW trademark. The VW portion of the domain name is identical to the Complainant’s trademark. The balance of the domain name is a geographical descriptor – the city of Guelph, Ontario, Canada.
Where a domain name is composed of a trademark together with a place name, a reader will naturally split them in that way. The absence of a space or the insertion of a dash, underscore or hyphen does not prevent that approach. The use of the VW trademark, together with a geographic qualifier, is insufficient to prevent the composite domain name from being confusingly similar. Many Ontario Volkswagen dealers use a geographical descriptor combined with VW as a domain name to promote their dealerships. Examples of such Ontario dealerships include <donvalleyvw.com>, <mississaugavw.com>, <kingstonvw.com>, <sudburyvw.com>, <brantfordvw.com>, <bellevillevw.com>, <oakvilleaudivw.com>, <cornwallvw.com>, <hamiltonvw.com>, <stcatherinesvwaudi.com>, <cambridgevw.com>, <owensoundvw.com>, <georgetownvw.com>, <allistonvw.com> and <orangevillevw.com>.
The Respondent has no rights or legitimate interests in respect of the domain name. He is a Mercedes Benz salesman. Mercedes and Volkswagen are competitors in the automotive industry. At the time the domain name was registered, it was used for the sole purpose of directing consumer attention away from the local Guelph Volkswagen dealer and towards the local Mercedes dealership where the Respondent works. The title of the "www.guelphvw.com" website was "why buy a VW when you can get a Mercedes-Benz at $33,950." VW is not a combination of letters that traders would legitimately choose unless seeking to create an impression of association with the Complainant.
The domain name was registered and is being used in bad faith for several reasons. After the domain name was registered to the Respondent, it was offered for sale to the local Guelph Volkswagen dealer for $4,000. Respondent’s registration and use of a "VW" domain name in association with the advertising of Mercedes automobiles, combined with the offer for sale, is clear evidence of registration and use in bad faith. Such use of the domain name, particularly in association with Mercedes photographs and discussion groups, demonstrates an ongoing effort on the part of the Respondent to mislead or divert potential customers away from Volkswagen to Mercedes and to tarnish the Complainant’s marks.
The Respondent’s website was modified to Guelph Versatile Wheels and later to Guelph Vision Works, which are not incorporated companies. No telephone number was assigned to those companies. There is no indication of any use of Guelph Versatile Wheels or Guelph Vision Works by the Respondent prior to the communications with Complainant’s counsel. Complainant submits that the transition from "Guelph Virtual Wheels" to "Guelph Vision Works" (and now to "www.MBCanada.com") is a shell game played by the Respondent to attempt to avoid liability. The fact that the domain name underwent changes after the demand letter from counsel cannot alter the fact that a bad faith act had occurred during the period following registration, which is sufficient for a finding of bad faith under the Policy because the Policy should not be construed in such a manner that bad faith use should continue after the dispute has begun or that these proceedings have been commenced.
Respondent asserts that his website is a "non-commercial ‘solutions company’ for friends and relatives, specializing in hardware and software problems for the elderly and close friends and relatives."
While the domain name had pointed to "www.MBSuperstars.com", it did not mention VW on any part of the site other than in the HTML headers. Only the header stated "Why buy a VW when you can have a Mercedes-Benz from $37,950," and this was removed after a contact with the Complainant’s lawyers.
Somewhat contradictorily, the Respondent also claims that in a free market economy, he should be able to advertise competitive products as he sees fit. He explains that he changed the website numerous times at the request of Complainant because of constant legal threats and that he is also in the automotive business and tried to use the site to sell wheels, which were legally purchased and processed through a reputable business.
The domain name currently points to "www.MBCanada.com" which is apparently another one of Respondent’s online communities which features a Mercedes-Benz forum.
Complainant cannot trademark two letters of the alphabet in conjunction to all other words. What about <redvw.com> or <housevw.com> or any other of the thousands of combinations, asks the Respondent. Trying to imply that all domains with the letters VW in them are owned by VW is absolutely preposterous.
The Respondent adds that a decision to remove ownership of this domain could have huge implications. It could prevent the registration of millions of unrelated domain names. Hence, he concludes that the Complainant does not have a right to <guelphvw.com>. In addition, <guelphvw.com> is an entirely different domain name than <vw.com> and the name Guelphvw does not have a trademark registered against it.
According to the Respondent, the Complainant is trying to lay claim to this name on behalf of one of their dealers, namely Guelph Volkswagen. Therefore this dealer would like to have the domain name, but is in no way entitled to it. He currently runs his site under "www.GVW.ca". Interestingly, on the (previous) "Versatile Wheels" version of his site, the Respondent refers to his company as "GVW".
The argument that Guelph can only represent Guelph and Volkswagen is completely false. According to "www.dictionary.com" the word Guelph can also have the following meaning: "A member of a strong faction in medieval Italy that supported the power of the pope and the city-states in a struggle against the German emperors and the Ghibellines."
Only under duress did Respondent tell Guelph Volkswagen that the domain name could be bought for $4000.
The domain name is currently pointed to a non commercial web forum, which does not sell any products. It is a public forum used for voicing ones opinion on a wide variety of subjects. In the future the Respondent plans to add a Guelph section as well as many other regional areas. The site will be called Guelph Vision World and the Respondent intends to follow that up with other regional areas.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
There is no doubt that the Complainant has rights in the VW mark(s) and that such mark is well known. Evidence shows actual knowledge of the mark by the Respondent (including his price comparison between a Volkswagen and a Mercedes, which was later removed from the site). The Panel rejects the argument that the case should be brought by the Volkswagen dealership in Guelph rather than the Complainant as the trademark proprietor. It is a well established principle of trademark law that the owner of the mark not only has the right but in certain cases a duty to protect its mark, not the non exclusive licensees.
As to similarity, the analysis must start from the fact that the domain name consists of the Complainant’s mark with the word Guelph, which the Panel considers as a geographical descriptor. The Panel cannot agree with the Respondent that the word Guelph would be understood in the relevant market (Ontario) as referring to "a member of a strong faction in medieval Italy that supported the power of the pope and the city-states in a struggle against the German emperors and the Ghibellines," but rather to the city of Guelph, Ontario.
This case is not dissimilar to the AT&T Corp v. WorldclassMedia.com case (WIPO Case No. D2000-0553), concerning domain names <attmexico.com> and <att-latinamerica.com>, in which the Panel stated: "where a domain name is composed of a trade mark juxtaposed with a place name, a reader will naturally split them in that way, and the absence of a space, or the insertion of a dash, underscore, or hyphen does not prevent that approach. Accordingly, the Panel is of the view that each of the domain names in dispute comprises a portion identical to a mark (ATT) in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s mark ATT or Complainant’s Marks." Other relevant cases include Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (<walmartcanada.com>); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<lexuschicago.com>; <usalexus.com>; <napervillelexus.com> and other domain names); America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713 (<aolfrance.com>, <aolgermany.com>, <aolireland.com>, <aolspain.com>), in which the Panel stated: "addition of a place name generally does not alter the underlying mark to which it is added."; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (<cellularonechina.com>); and Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 (<rollsroycecanada.com> and <rollsroycecanada.net>). Also relevant is the Daimler Chrysler A.G. v. James Cruz case (WIPO Case No. D2000-1554) in which transfer of the <driveamercedes.com> domain name was ordered. "The addition of the words ‘drive a’ to the domain name is devious given the worldwide reputation of Mercedes automobiles. Persons worldwide accessing the domain name would be bound to think that the domain name had a connection with Mercedes or Mercedes Benz."
Because the Respondent is based in Canada and the domain name refers to a city in Canada and Canadian licensees of the Complainant, it is worth noting that the Complainant would have a serious case against the Respondent under at least sections 7 and 22 of the Canadian Trademarks Act.
Finally, it is interesting to note that in its "Versatile Wheels" incarnation, the Respondent’s site contained the following disclaimer: "The VW in GuelphVW stands for Versatile Wheels. GW is a private website with no ties to Volkswagen or any of its trademarks." The site then suggests that Internet users go to <vw.com>.
The Panel thus decides that the domain name is confusingly similar to the Complainant’s VW mark(s) in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
"(iii) you [Respondent] 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 trade mark or service mark at issue."
The Respondent asserts that the site to which the domain name resolves is a "non-commercial ‘solutions company’ for friends and relatives, specializing in hardware and software problems for the elderly and close friends and relatives." The Respondent had at one point in time a "mag wheel" business (presumably for-profit) under the name Guelph Versatile Wheels.
The file shows that in fact the Respondent at one point in time used confusion with the "VW" to try to promote or at least draw attention to competing (Mercedes-Benz) products, and still does (or did recently) in the header portion which is recognized by search engines and by referring users to the "www.MBCanada.com" page and its Mercedes-Benz forum. In other words, the Respondent did not use the site to offer criticism of Volkswagen or its products, but rather used it to send Internet users to a competing product. The Panel fails to see the public interest in allowing this type of confusion.
The Respondent (after receiving notice from the Complainant) changed its business name twice to find other possible meanings for the letters VW. This in this Panel’s view removes the necessary legitimacy of the Respondent’s main argument on this point, which seems to be based on paragraph 4(c)(iii). Indeed, there is no evidence under 4(c)(ii); and the unfair trade practice already mentioned (lining to a competitive product) eliminates any argument under 4(c)(i).
Had the Respondent started its "Vision Works" site and in no way created or misused confusion with the Complainant’s marks, perhaps the situation would have been different--though not necessarily as was shown in the United States in the case of Virtual Works Inc .v. Volkswagen of American Inc., 57 USPQ 2d., 1547 (4th Cir. 2001). But here the Respondent simply tried every possible way to keep using the VW letters to attract unsuspecting Internet users and continuously referred them to a site concerning a competing product, namely Mercedes-Benz cars.
Volkswagen dealerships in Canada are licensed users of the Complainant’s mark, and many of those who have created websites use a domain name structure similar to the domain name, i.e., <nameofcityvw.com>. Clearly, the Respondent is not licensed by the Complainant to use the mark. The doctrine of family of marks (applicable in Canadian trademark law) may also be relevant in this context. See Techniquip Ltd. v. Canadian Olympic Association (1999), 3 C.P.R. (4th) 298; Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982), 61 C.P.R. (2d) 42 (F.C.T.D.); McDonald’s Corp. v. Coffee Hut Stores Ltd. (1994), 55 C.P.R. (3d) 463; McDonald’s Corp. v. Silcorp Ltd. (1992), 41 C.P.R. (3d) 67 (F.C.A.); and Everex Systems, Inc. v. Everdata Computer Inc., (1992), 44 C.P.R. (3d) 175 (F.C.T.D.).
The Panel thus finds that the Respondent has no right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product.
There are several elements that point to bad faith registration and use. Before doing so, however, it is important to note that while the Respondent argues that the current version of the site does not include any element of bad faith (though its redirection of unsuspecting users to a site dealing with a competitor’s products is highly questionable), the Panel is entitled to look at use of the domain name since registration, and in particular before notice (cease and desists letter) was received. See the discussion on this point in Valor Econômico S.A. v. Daniel Allende, WIPO Case No. D2001-0523 ("the present interruption of a former bad faith use of a website does not mean that there is no bad faith use under Paragraph 4(a)(iii) of the Policy. The Policy should not be construed in such a manner that bad faith use should continue after the dispute has begun or that these proceedings have been commenced. To do that would amount to grant to any Respondent a protection against the Policy’s consequences by simply allowing him to cease or cancel any posting of contents on the website, and leaving the site without any use for all practical effects. Such would be an absurd interpretation of the Policy."). Other relevant cases on point include Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Playboy Enterprises International, Inc. v. Victoriano Moreno Martín, WIPO Case No. D2000-1679; Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295; and Yahoo! Inc. v. Casino Yahoo, Inc., Jon Maranda, WIPO Case No. D2000-0660.
Now as to the signs of bad faith, the cumulative effect of which is relevant (see the oft-cited decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). First, the Complainant’s mark is well known and the Respondent knew that VW referred to the Complainant by incorporating on its website a statement about purchasing a Mercedes rather than a Volkswagen. This is indicative of bad faith registration.
Second, as to use, the Respondent did offer to sell the domain name, even before there had been significant action on the part of the Complainant’s lawyers. Evidence of offering to sell the domain name (under Paragraph 4(b)(i)—it should be noted that evidence under any of the subparagraphs of paragraph 4(b) applies to both registration and use) and of disruption of business (Paragraph 4(b)(iii)) has also been adduced. With respect to paragraph 4(b)(iii), the Panel refers to get practice of several other dealerships to set up (licensed) websites using the structure "www.nameofcityvw.com," which the Respondent appropriated. At the very least, the panel finds it hard to believe that the fact that the Respondent chose precisely the same structure for the domain name is a mere coincidence.
The panel thus finds that the domain name was registered and used in bad faith, as defined in the Policy.
On the basis of the elements set out above, the Panel finds that:
1. The domain name <guelphvw.com> is confusingly similar to the mark VW, in which the Complainant has rights;
2. The Respondent does not have any rights or legitimate interests in respect of the domain name;
3. The domain name was registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <guelphvw.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: June 16, 2003