Volkswagen AG v. Emmanuel Efremov
Case No. D2014-0191
1. The Parties
The Complainant is Volkswagen AG of Wolfsburg, Germany, represented by Grenius Rechtsanwälte, United States of America.
The Respondent is Emmanuel Efremov of Indianapolis, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2014. On February 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2014, the Registrar transmitted by email to the Center its verification response confirming, inter alia:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on June 7, 2007;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 11, 2014. 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.
On March 11, 2014, the Center received an email from one “A. Dan’Iyan” stating that he had not received a copy of the Complaint. Mr. Dan’Iyan is not the named Respondent. However, his email was sent using the email account which the Registrar had confirmed was the email address for the Administrative and Technical Contacts for the disputed domain name. The Center sent a further copy of the Notification of Complaint to Mr. Dan’Iyan, using the email address from which his message had been received, on March 12, 2014. No further communication has been received from either Mr. Dan’Iyan or the named Respondent.
4. Factual Background
The Complainant is the parent company of the Volkswagen Audi Group which, amongst other things, through various subsidiaries produces Volkswagen, Audi, Bentley, Bugatti, Lamborghini, MAN, Porsche, Scania, Seat and Skoda vehicles. Its Volkswagen range has been marketed throughout the world under the trademarks Volkswagen and VW for some six decades. It sells its Volkswagen brand vehicles in 153 countries. In 2012, it sold more than 5.7 million Volkswagen passenger cars and more than 500,000 commercial vehicles.
It has numerous registered trademarks around the world for VOLKSWAGEN including German Trademark No. 621252 dating from February 21, 1949, U.S. Trademark No. 0617131 dating from May 4, 1954, Community Trademark No. 703702 dating from December 12, 1997, International Trademark Registration No. 263239 dating from December 10, 1962 and International Trademark Registration (Madrid Protocol) No. 702679 dating from July 2, 1998.
Annex 7 to the Complaint is a print-out of the website to which the disputed domain name resolved before the Complaint was filed. It features a background or wallpaper of a large number of the well-known VW rondel or logo. Although apparently printed in February 2014, it features what appear to be advertisements for the sale of a number of 2006 Volkswagen cars under the heading “Current Volkswagen Automobiles – USA Models”. It also has links, such as “Alabama Volkswagen Dealers” and “Alaska Volkswagen Dealers” which apparently include lists of official Volkswagen Dealers in the relevant state.
At the time this decision is being prepared, however, a generic page is displayed by the websitehost stating that the “customer who owns this domain has parked their website.”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No substantive response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the various registered trademarks for VOLKSWAGEN referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
In these circumstances, the disputed domain name differs from the Complainant’s registered trademarks by the addition of the prefix “my-”. That prefix clearly reinforces the association with the Complainant arising from the use of its trademark. It is unsurprising therefore that previous UDRP panels have found that such domain names are confusingly similar to the relevant trademarks. See e.g. Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 , Volvo Trademark Holding AB v. SooKwan Park, WIPO Case No. D2005-0448 and General Motors LLC v. John Brady/ N2 The Net, WIPO Case No. D2012-2109 .
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirements under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you [the respondent] of the dispute, your [the respondent’s] 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 [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or
(iii) you [the 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and then the burden shifts to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
It can be inferred from the Complaint that the Complainant has not authorized or licensed the Respondent to register the disputed domain name or to use the Complainant’s trademarks. It is also clear that the disputed domain name is not derived from the Respondent’s own name. There is no basis in the record for the Panel to consider that the disputed domain name is derived from some other name that the Respondent is commonly known by. To the contrary: the Complainant has submitted evidence showing that the Respondent has registered a number of other domain names based on third parties’ trademarks for similar types of use. For example, these include , , , and so on. It is unlikely that the Respondent is commonly known by all, or any, of these names.
The Complainant contends that the Respondent uses his website to direct Internet users looking for the Complainant’s products to car dealers in the different states of the U.S. According to the Complainant:
“These car dealers can contact Respondent and request their contact details to be incorporated on the website. It is obvious that Respondent will eighter [sic] charge for clicks of internet users that land on the car dealers website through his website or charge the car dealers for incorporating theirs contact details on his website. Respondent is not offering any own goods to internet user.
Respondent furthermore prominently [sic] provides advertisements on the website. In fact, the Respondent inserted links provided by the “Ad choice” program from Google Inc. Respondent automatically receives fees and commissions for these advertisements.
Due to the amount of advertisements, the content on the websites related to Complainant and the prominent use of the trademark “VW” and the unauthorized pictures of automobiles of Complainant on the website and especially considering the chosen domain name “my-volkswagen.com”, it is obvious that Respondent just wants to ride on the good reputation of Complainant and registered [trademark] and has used the disputed domain name only in order to receive a share of advertising revenue derived from advertisements or to get commission from car dealers who want to be listed on the website.”
First, the Panel must acknowledge that the use of a domain name to generate revenue through pay-per-click advertising is not in itself per se contrary to the Policy. Where a respondent adopts such a business model, rights or legitimate interests turn on whether or not the respondent in question is impermissibly seeking to take advantage of another’s trademark to generate that revenue. Thus, the Panel is not in a position simply to accede to the Complainant’s propositions.
To this Panel, however, the striking feature of the Respondent’s website (before it was “parked”) is that the main section of the Respondent’s website, under the heading “Current Volkswagen Automobiles”, lists a number of 2006 year models or variants of the Complainant’s Volkswagen vehicles even though the print out is from February 2014.
In the absence of an explanation or justification from the Respondent, the Panel is not willing to speculate about why the Respondent is apparently promoting 2006 year models as “current” automobiles. Rather, in the absence of explanation, it suggests that the website is really only a pretext rather than a bona fide offering of goods or services.
Accordingly, the Complainant has established a prima facie case under the second limb of the Policy, which the Respondent failed to rebut. Therefore, the Panel finds that the requirement under the second limb of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has 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 the 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 or service on the Respondent’s website or location.
The instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v Tropic Web, WIPO Case No. D2000-0624.
The Complainant has submitted evidence that the Respondent has registered at least 20 other domain names which use “my-” or “all-” or “-hq” or similar expressions in conjunction with a very well-known trademark. A number of examples were referred to above. As a result, the Complainant contends that the Respondent has engaged in a pattern of conduct of registering domain names based on very well-known trademarks to generate pay-per-click revenues. In this connection, the AdChoices advertisements shown on the print-outs of the various websites (including that for the disputed domain name before it was “parked”) are not advertisements confined to the goods or services of the relevant trademark.
The Complainant also points out that, in February 2014, the Respondent offered to sell the disputed domain name to it for USD 3,200. In the email in which the Respondent made that offer, he purported to justify it as the total of acquisition costs (USD 1500 in 2007) and then hosting costs of USD 240 per annum for each of the years 2007 to 2013 and, apparently, USD 20 for 2014. No receipts or other documentation were supplied in corroboration of this claim. Further, one might think that the “hosting fees”, if they may be included in this account, should be offset by any revenues generated from the website. The email finished, however, with the warning that, if the Complainant did not see its way to making this payment, “it may very well be in our best interest to sell the domain on the open market to the highest bidder and have you deal with whomever acquires ownership thereafter.”
While that last warning may be perfectly legitimate where the holder of a domain name has rights or legitimate interests in it, that is not this case in the circumstances and for the reasons outlined above.
Taking these matters together, the Panel finds that the Respondent has clearly used the disputed domain name in bad faith under the Policy. Further, it is plain from the renown of the VOLKSWAGEN trademark and the number of other very well-known trademarks which the Respondent has used as the basis of his domain names that the Respondent was well aware of the trademark significance of VOLKSWAGEN when he registered or acquired the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
Therefore, the Panel finds that the requirement under the third limb of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Warwick A. Rothnie
Date: March 25, 2014