Volkswagen Aktiengesellschaft v. SPNC

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Volkswagen Aktiengesellschaft v. SPNC

Case No. D2003-1036

1. The Parties

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

The Respondent is SPNC, of Warszawa, Poland.

2. The Domain Names and Registrar

The disputed domain names <vwbankdirect.com> and <vwbankdirect.net> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 24, 2003. On December 30, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On December 30, 2003, Go Daddy Software

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 January 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2004.

The Center appointed Anders Janson as the sole Panelist in this matter on February 24, 2004. 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 a German limited company, in the business of manufacturing cars. The Complainants name is Volkswagen AG, but it is commonly known as VW, an abbreviation used from the start of the Complainant’s enterprise. The Company has manufactured more than 21,5 million VW Golfs since 1974, and the Complainants Group sold more than 4,9 million cars worldwide cars in the year 2002. The Complainant’s group sales revenue worldwide was more than € 86 billion and employs approximately 320.000 employees.

Volkswagen Bank GmbH, commonly known as VW Bank is a wholly-owned subsidiary, which offers banking services, in particularly financing for the Complainant’s cars. It is common for car manufacturers to offer banking services either by themselves or by subsidiaries. Such services can be found under <Renault-bank.de>, <chryslerfinancial.com>, <bmwbank.de>, <peugeoutbank.de> and <Toyota-bank.de>. The Complainant’s subsidiary offers its services on the Internet under the – amongst others - domain names <vw-bankdirect.de>, <vwbankdirect.de>, <vwbank.de>, <vw-bank.de>, <vw-bank.com>, volkswagenbank.de>, and <vw-volkswagenbank.com>. Another subsidiary, Volkswagen Bank Polska S.A. offers banking and financing services under the domain name <vwbankdirect.pl>.

The suffix "direct" in domain names is commonly in use within the sector of financial services, which often stands for the on-line services offered by the company, such as <firstdirect.de>, <entriumdirect.de>, <comdirect.de> and <hvb.de>.

The subsidiary Volkswagen Bank GmbH owns the trademark "VOLKSWAGEN BANK DIRECT", registration No 39721651.3, registered in Germany May 14, 1997.

Further more, the Complainant is in itself the owner of several hundred trademark registrations of the mark "VW", such as, inter alia:

- Registration No 682 214, of VW in Germany, registered October 1, 1952;

- Registration No 653,695 of VW, in the US, registered on October 19, 1957;

- Registration No 1067310 of VW, in Great Britain, registered December 30, 1981;

- Registration No 1166800, of VW, in Germany on June 1, 1990, for inter alia procurement of financial transactions and factoring,

- Registration No 39800184.7, in Germany, on July 1, 1998, for inter alia financial concerns financial transactions, including dealing in credits, banking and leasing.

- Registration No 728196, international trademark under the Madrid Agreement and Protocol thereto, on July 16, 1999.

The Panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of the registrations listed in the Complaint predate the date of registration of the disputed domain name by the Respondent, which was on December 27, 2001.

The Panel finds it established that VW is a well-recognized trademark and that the trademark is both distinctive and famous.

The Respondent’s stated name is "SPNC", with the stated administrative contact Slawomir Nowakowski. The Disputed Domain names links to a site provided by the Registrar Go Daddy. The Complainant has asserted, and produced evidence of, that the disputed domain names has been offered for sale on the web-site.

When first aware of the domain name registration of the disputed domain name <vwbankdirect.com>, the Complainant sent a cease and desist letter to the Respondent. In a response signed by a lawyer on behalf of the Respondent, the Respondent offered to sell the domain name in question. No claim was made as to the legitimate interest to the domain name apart from the selling of the domain name.

The Respondent is in default, and accordingly, has not challenged the conclusions of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain names are identical and confusingly similar to a trademark or service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain names;

- The domain names have been registered and are being used in bad faith; and

- The domain names <vwbankdirect.com> and <vwbankdirect.net> should be transferred to the Complainant

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical

or confusingly similar to a trademark or service mark in which the Complainant

has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of

the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used

in bad faith.

A. Identical or Confusingly Similar

The domain names at issue are <vwbancdirect.com> and <vwbankdirect.net>.

Complainant is the holder of a large number of registered trademarks of the

word and figure mark VW all over the world. The trademark is very well known.

The Complainant has also asserted, and produced evidence of, that it is not

uncommon for car manufacturers to offer banking services. The Complainants further

has provided evidence in support of the dommon use of the suffix "direct"

in web-sites within the financial sector.

The Panel finds that the distinguishing part of the domain names, "VW",

is in itself a distinguished trademark, as well as the unabbreviated form, "Volkswagen".

The Panel further finds it established that the Complainants subsidiary Volkswagen

Bank GmbH offers its services under the domain names <vwbankdirect.de>

or <vw-bankdirect.de>. and the polish subsidiary Volkswagenbank Polska

S.A. offers its services under <vwbankdirect.pl>, which enhances the confusing

similarity.

The Panel also finds that the suffix "bank direct" in the domain

names is merely descriptive. The incorporation of a famous trademark by adding

generic terms does not alter the perception of confusing similarity. The Panels

finds that because the Complainant’s subsidiaries offer banking services, the

disputed domain names are misleading to any potential customer

In conclusion, the Panel finds that the Complainant has provided statements

to support the supposition that the disputed domain names and the trademark

of the Complainant are confusingly similar.

The Respondent does not contest this supposition.

The domain names must therefore be considered confusingly similar to the trademark

VW and/or VOLKSWAGEN. The Panel holds that the Complainant has established element

(i) of the Policy Paragraph 4(a).

B. Rights or Legitimate Interests

The Respondent has not filed a Response in accordance with the Rules, Paragraph 5.

There is no apparent connection between the Respondent and the disputed domain

names, and no obvious legitimate connection between the disputed domain names

and the content of the site to which it links. There is no evidence of the Respondent's

use of, or demonstrable preparation to use the domain names with a bona fide

offering of goods and services. The Respondent has not presented any evidence

of rights or legitimate interest in using the disputed domain names.

The Complainant has not licensed or otherwise permitted the Respondent to use

the trademark "VW" or to apply for a domain name incorporating this

trademark.

Under these circumstances, the mere assertion from the Complainant that the

Respondent has no rights or legitimate interests is enough to shift the burden

of proof to the Respondent for him to demonstrate such a right or a legitimate

interest. The Respondent has not presented any evidence of rights or legitimate

interests in using the disputed domain names and has no obvious connection to

them. Further more, the Respondent has offered the domain names for sale, and

has apart from that not claimed any other legitimate interest to the domain

names.

The Panel therefore holds that the Complainant has established element (ii)

of the Policy’s Paragraph 4(a).

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), evidence of the registration and use

of a domain name in bad faith shall include, inter alia, proof that by

using the domain name, the Respondent has intentionally attempted to attract,

for commercial gain, Internet users to a website, by creating a likelihood of

confusion with the Complainant’s mark as to the source or affiliation of the

website or of a product or service on the website (Policy, Paragraph 4(b)(iv)).

The Panel has already established that the mark "Volkswagen" and

its abbreviation "VW" are well known and that the disputed domain

names are confusingly similar to the Complainant’s famous mark. The trademarks

have been registered in many countries for decades. The Complainant is a very

well known car-manufacturer, which also, like many of its competitors, offers

banking services primarily to finance the purchase of cars.

It is most unlikely that the Respondent registered the disputed domain names

not knowing of the Complainant’s mark. Furthermore, the Respondent has not presented

any reasons, evidence or arguments of a legitimate interest in using or registering

the

disputed domain names. The Respondent has not, since registering the domain

names almost two years ago, set up a web-page indicating any preparations to

use the domain names, nor has in any other way seemingly made use of the domain

names other than offering to sale the domain names, which in itself cannot demonstrate

a legitimate interest or right in, or bona fide use of, the domain names.

Further more, to register a company that incorporates the term "bank"

is, as a general principle in most countries as far as the Panel is aware, limited

to enterprises that holds certain permissions, and thus are entitled to carry

on a banking business.

The fact that the Respondent also has registered the same domain name under

two different top level domains suggests that the Respondent is engaged in a

pattern of conduct. The Registration further prevents the Complainant from registering

the Domain names.

For the abovementioned reasons, the Panel finds that the Respondent has registered

the disputed domain names in bad faith. The Panel therefore, concludes that

the Complainant has proven that the Respondent was acting in bad faith pursuant

to Paragraph 4(a)(iii) of the Policy.

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 names, <vwbankdirect.com>

and <vwbankdirect.net> be transferred to the Complainant.

Anders Janson

Sole Panelist

Date: March 9, 2004

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