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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen AG v. Milas Auto

Case No. DTV2006-0003

1. The Parties

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

The Respondent is Milas Auto, Dvorak, Torrance, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <volkswagen.tv> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 21, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 29, 2006, Intercosmos Media Group d/b/a directNIC.com 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 adopted by the registration authority of “.TV” (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy adopted by the registration authority of “.TV” (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 April 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2006

The Center appointed David Levin Q.C. as the sole panelist in this matter on May 4, 2006. 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 has produced evidence that it is a vehicle manufacturer with a worldwide reputation and the proprietor of a large number of trademarks in many countries. It is - inter alia - owner of the following registered trademarks VOLKSWAGEN:

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

b) German trademark No. 39800185.5, registered for Classes 1-42 applied for January 2, 1998;

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

d) 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;

e) International trademark No. 702679, registered for classes 1 to 42, with priority as of July 1, 1998, designated for over 50 contracting parties;

f) Community trademark No. 000703702, registered for classes 1 to 42, with priority as of December 12, 1997.

5. Parties’ Contentions

A. Complainant

The Complainant has made extensive submissions supported by detailed documentary evidence seeking to establish that:

a) the domain name in question is identical or confusingly similar to trademarks in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in respect of the domain name; and

c) the domain name <volkswagen.tv> has been registered and is being used in bad faith.

In support of (a) above it has produced evidence of a number of trademark registrations around the world. To establish the worldwide reputation in the VOLKSWAGEN trademarks (which trademarks are detailed in paragraph 4 above) it has referred to its historic production of vehicles under this name, its current production and model range, its worldwide sales revenue, employment numbers and the plants and countries in which vehicle production is undertaken, including Wolfsburg, Emden, Hanover, Mosel, Brussels, Pamplona, Bratislava, Palmela, Poznan, Mexico, Argentina, Brazil, South Africa and China.

Furthermore it details how it uses the trademark VOLKSWAGEN in a portfolio of domain names registered by it or its licensees. The Complainant contends that it has created extensive goodwill and a worldwide reputation in association with trademarks belonging to the family of VOLKSWAGEN trademarks, and also in the use of the trademark name on the Internet. Finally it submits that any distinction between the trademark trademark VOLKSWAGEN and a domain name with a suffix added to the word ‘volkswagen’ is an irrelevant distinction for the purposes of determining whether a disputed domain name is or is not identical or confusingly similar to the relevant mark.

In support of (b) above the Complainant has set out in detail the events which have occurred since it became aware of the registration of this domain name. Initially the Respondent advertised his own business under “www.volkswagen.tv”. Visitors to the site were greeted by the slogan “Welcome to MILA’S HONDA!” and were redirected to a website www.milashonda.com. The domain name <milashonda.com> is registered to the Respondent and the website is apparently owned by the Respondent also.

On July 5, 2005, the Complainant sent a cease and desist letter to the Respondent. There was no response by the Respondent to this letter however the redirection of a visitor to the “www.milashonda.com” website was altered; redirection now was to “www.autotip.jistc.net/news”. This website is apparently connected to <autotip.us> which is also registered to the Respondent. On July 20, 2005, the complainant sent a second cease and desist letter to the Respondent. Again there was no response but again the website under “www.volkswagen.tv” was altered to redirect to a link page which led to numerous commercial offers apparently relating to the Respondent’s products.

Recently the website “www.volkswagen.tv” has been displaying an ‘Under Construction’ banner but it still shows advertising from which it is to be inferred that the Respondent receives commission. In support of this last contention the Complainant has provided evidence of the links which direct the internet visitor from the “www.volkswagen.tv” site via the servers of Overture Services Inc, a wholly owned subsidiary of Yahoo! Inc. Overture Services Inc is said to be one of the global leaders in commercial search services on the Internet, and the owner of the website using Overture products pays for the linking by the amount of clicks the website generates. Meanwhile the Respondent generates revenues each time an internet user clicks on one of the links of a third party.

In support of (c) above the Complainant provides detailed submissions supporting its contentions that the conduct of the Respondent prior to any warning letters from the Complainant and its subsequent conduct after various ‘cease and desist’ letters were sent by both ordinary mail and email is evidence of registration and use of the domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this application, the Complainant must prove that each of the three requisite elements in that paragraph are established, that is:

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) 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 is to resolve 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 contrary to the Policy Paragraph 4(a)(i)

The Complainant uses the trademark VOLKSWAGEN extensively around the world and has done so for more than 50 years. The mark is world famous. The Complainant and its duly authorized licensees hold domain names incorporating the trademark name including both generic (gTLDs) and country code (ccTLDs) including <volkswagen.com>, <volkswagen.com.au>, <volkswagen.de>, <volkswagen.ch> and <volkswagen.fr>. These domain names provide the location for information on the Claimant’s products and services as well as information on the company and its licensees.

In considering whether the domain name <volkswagen.tv> is identical to the Complainant’s trademark it is appropriate to ignore the country code suffix: see Rodale Inc. v. Cass Foster, WIPO Case No. DBIZ2002-00148. See also Volkswagen of America, Inc. v. Walter Wieczorek, National Arbitration Forum Claim Number: FA0105000097181. Similarly the difference between the capitalization of the trademark and the lowercase of the subject domain name <volkswagen.tv> is irrelevant, if only because capitalization is irrelevant as a distinguishing feature in domain names generally. The Panel therefore concludes that the domain name <volkswagen.tv> is identical to the VOLKSWAGEN trademarks of the Complainant and its licensees. The Panel notes in passing that in Volkswagen of America, Inc. v. Walter Wieczorek (supra) the domain name which is the subject of the Complaint <volkswagen.tv>, was found to be identical to the trademarks then held by the Complainant or its subsidiaries, of which Volkswagen of America, Inc. was one.

Even if the Panel were wrong in this regard, the uncontested evidence is that the mark VOLKSWAGEN is, and the Panel finds, of worldwide renown. The domain name <volkswagen.tv> is confusingly similar to this mark. The Panel finds support for this finding in Volkswagen AG v. David’s Volkswagen Page, WIPO Case No. D2004-0498 (a decision dealing with the domain name <volkswagen.org>.

B. Rights or Legitimate Interests contrary to the Policy Paragraph 4(a)(ii)

The Complainant has shown in its filed Complaint that the Respondent has no rights or legitimate interests in conducting its business under a domain name which is made up of the mark VOLKSWAGEN. The Panel is satisfied that sufficient evidence has been filed to require the Respondent, if he wished to do so, to satisfy the Panel of his rights or legitimate interests in the domain name. Notwithstanding the submissions of the Complainant the Panel does not accept the reasoning contained in Do the Hustle, LCC v. Tropic Web, WIPO Case No. D2000-0624 that once the assertion of lack of rights or legitimate interests in the domain name is made on behalf of a Complainant the burden of proof falls on the Respondent to establish the relevant right or interest. Although the evidentiary burden might fall on the Respondent in that situation, the ultimate burden of proof remains where it always lies, on the Complainant.

In the present matter the Respondent has not seen fit to attempt to discharge the evidentiary burden. In such circumstances that failure can be construed as an admission of the absence of such a legitimate right or interest: See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221. In any event the Complainant has provided evidence of the use of the domain name to draw those using the Internet into the Respondent’s motor vehicle website, one completely unassociated with the Complainant, and that as the Complainant wrote to question the activities being undertaken changes were made to the website to direct visitors to another site of or connected with the Respondent or to divert legitimate enquiry. Recently the site has not been used to direct visitors to the businesses undertaken by the Respondent or those associated with it; however the evidence does reveal that advertising is being shown on the site from which the inference can be drawn that the Respondent is earning commission or other financial reward for such advertising.

The Respondent has not attempted to establish that it is commonly known by the <volkswagen.tv> domain name, pursuant to Policy paragraph 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

Taking all of the evidence together including the absence of any response by the Respondent, the Panel has no difficulty in concluding that the Complainant has established that the Respondent has no rights in or legitimate interests in the domain name <volkswagen.tv>.

C. Registered and Used in Bad Faith contrary to the Policy Paragraph 4(a)(iii)

The evidence shows that the Respondent is involved in the motor vehicle trade. The Panel accepts the Complainant’s submission that the Respondent knew or ought to have known of the Complainant’s trademarks and legitimate business interests in the name VOLKSWAGEN when it acquired the domain name <volkswagen.tv>. The Complainant refers to Microsoft Corp v. Mindkind, WIPO Case No. D2001–0193 and submits that given the worldwide reputation of the trademark and worldwide business of the Complainant the choice of <volkswagen.tv> as a domain name cannot be coincidental;

a) registration of a well-known trademark without prefix or suffix is sufficient to establish bad faith: see Veuve Clicquot Ponsardin Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163;

b) the Complainant operates domain names under similar names;

c) no explanation of legitimate use is advanced by the Respondent;

d) the Respondent’s knowledge of the Complainant’s trademarks can be inferred.

The Panel finds on the evidence submitted that registration and use in bad faith is established.

The evidence submitted by the Complainant is also sufficient to show a breach of paragraph 4(b)(iv) of the Policy. The Respondent has attempted to use the likelihood of confusion with the Complaint’s mark as to its source, sponsorship, affiliation or endorsement to draw internet users to its website. The recent use of the site which shows an ‘Under Construction’ sign but nevertheless features advertising for which it can properly be inferred that the domain name registrant is being paid is a continuation of the original bad faith registration and use and does not lead the Panel to conclude that earlier bad faith use is now negated.

7. Decision

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

David Levin Q.C.
Sole Panelist

Dated: May 11, 2006