Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Volkswagen of America, Auburn Hills, MI, USA ("Complainant") represented by Stephen J. Arpaia. The Respondent is Allan Allen Allan_Allen_Networks, Hendersonville, NC, USA ("Respondent").

The domain name at issue is "vwcabrio.com", registered with NameSecure.com.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 13, 2001; the Forum received a hard copy of the Complaint on March 15, 2001.

On March 20, 2001, NameSecure.com confirmed by e-mail to the Forum that the domain name "vwcabrio.com" is registered with NameSecure.com and that the Respondent is the current registrant of the name. NameSecure.com has verified that Respondent is bound by the NameSecure.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@vwcabrio.com by e-mail.

A timely response was received and determined to be complete on April 4, 2001.

On April 13, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed James Alan Crary as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant is a subsidiary corporation of Volkswagen Aktiengesellschaft ("VWAG"). A corporation organized under the laws of the Federal Republic of Germany.

Complainant and its parent organization manufacture and sell motor vehicle parts and accessories collectively known as "Volkswagen Products". Complainant and its parent corporation has extensively advertised and publicized numerous trademarks and servicemarks including the letters "VW" and "CABRIO".

The Complainant has registered trademarks and servicemarks including "VW" and "CABRIO".

Since 1949 over 10 million motor vehicles manufactured by Complainant and its parent organization have been sold in the United States under Complainant’s trademarks including VW® and CABRIO®. U.S. sales of these Volkswagen products exceeded $22 billion dollars.

The Complainant and it’s parent organization have expended large sums of money in order to advertise Volkswagen products including products sold under the VW and CABRIO marks. The marks have appeared prominently in television, print, outdoor advertising and on the Internet. By virtue of long-standing use, extensive and on-going advertising and strong consumer recognition, the VW mark and the CABRIO marks have become distinctive and famous marks.

Due to the extensive advertising with Complainant and its parent organization are known to the general public as "VW". Use by a third party of the name "VW" or vwcabrio.com would cause confusion and deception in the minds of the trade and general public by giving the impression that it is referenced to the Complainant or it’s parent organization.

The Complainant, a distributor doing business at the wholesale level as well as hundreds of retail dealerships have been licensed to use the trademarks and servicemarks of VWAG including the VW and the CABRIO mark in connection with the sale, service and repair of Volkswagen products and thereby to identify themselves to the public as associated with VWAG.

Great care is exercised in the selection of licenses and substantial efforts are made to exert control over the nature and quality of the goods and services provided by licensees, which employ the trademarks and servicemarks. Licensees are required to identify their business as authorized by VWAG on stationary and advertising and in other promotional materials.

Substantial goodwill has been built up for VWAG’s trademarks and servicemarks and for the products and services sold under the VW and CABRIO marks.

Respondent’s domain name vwcabrio.com incorporates the registered marks VW and CABRIO and is identical to the marks.

Respondent’s use of vwcabrio.com causes confusion and deception in the minds of the trade, consumers, and public giving the impression that it is a reference to the Complainant and the parent organization. Consumers are likely to mistakenly believe that Complainant or it’s parent organization sponsored the web site or that Respondent and Complainant are related.

The Respondent had no right or legitimate interest in respect to the domain name vwcabrio.com. Respondent had no connection with or authorization from the Complainant or it’s parent organization to use its trade names, marks, or servicemarks including the VW and CABRIO marks. The Respondent registered the disputed domain name on March 28, 2000 without consent. This was long after Complainant’s adoption, first-use and registration of the VW and CABRIO marks. The Respondent has never used the domain name vwcabrio.com in connection with a bona fide offering of goods or services, was not commonly known by the name VWCABRIO nor was Respondent engaged in any business or any other organizations commonly known by the name VWCABRIO. Respondent is violating the law by infringing on Complainant’s trademark rights in violation of the Lanham Act.

In particular it was asserted the Respondent acted in bad faith by deliberately trying to sell the domain name to the highest bidder. On approximately September 4, 2000 Complainant became aware that Respondent had listed the disputed domain name for sale to the highest bidder at the web site URL MERCHANT, a well-known domain name auction site. The minimum bid is $750.

Complainant made numerous demands that Respondents cease and desist from its infringement and dilution of Complainant’s trademarks. Transfer of the domain name was demanded. The Respondent was asked to contact Complainant concerning transfer.

Respondent has continued to list the domain name for sale through URL MERCHANT and has engaged in a semantic effort to disguise the real motivation for the domain name registration. Respondent’s calculated effort to sell the domain name vwcabrio.com for an amount far in excess of what Respondent paid to register the domain name fully demonstrated that Respondent had registered and is using the domain name in bad faith. Respondent registered the domain name in order to prevent Complainant the owner of the trademarks VW and CABRIO from reflecting the marks in a corresponding domain name. It was further alleged that Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s registered mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site. The Complainant sought transfer of the disputed domain name to it.

B. Respondent

The Respondent by letter lodged a general denial "all claims alleging facts that are not true, in fact! Calling and mailing me a "not true" statements claims calling me names, clain [sic] me in name a hijacking or hijacker by name".

Respondent denies that his web site uses Volkswagen of America logos. "Again, my dot-com is my-dot-com in no way the uses for a auto web site your use Volkswagen of America logos. Again I work very hard (hrs, day, wks) to find my dot.com’s and my money too!!!"

The next two paragraphs of the response were unclear:

Attached to the response is a letter dated September 15, 2000 addressed to Mr. Arpaia. In the letter Respondent states his belief that Complainant should not call people hijackers.

Respondent indicated that he called and talked to "Volkswagen of America" about registering their domain names, saying that it would be a good idea to register their names-all different variations. Respondent asserts that he e-mailed a domain master, Elliott Zelter and suggested, "He register the names" "they said they weren’t interested in doing that so I registered the name vwcabrio.com."

In the letter it was asserted that Respondent’s company virtual world Internet on-line services was a non-profit web site unrelated to the automobile, car, or Volkswagen.

The letter goes on to indicate that Respondent specialized in Internet businesses and web site design and development. Respondent indicates he has several Internet businesses for sale. Respondent asserts in the letter the "Internet names do not all make sense. For example, "NV.COM" could stand for "Nevada", but on the Internet it stands for something entirely different." …I registered HFILMS.COM that cannot be found in the dictionary but it means something to me and my business. The same hold true for my nonsensical combination of "VWCABRIO.COM".

The letter goes on to state Respondent’s good idea for a domain name "I have one for them: VW-CABRIO.COM" The letter then goes on to suggest that Respondent had never registered any names of major corporations like Coca-cola or Pepsi".

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "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 deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

Respondent’s domain name vwcabrio.com is comprised of a combination of Complainant’s famous marks VW and CABRIO, it is therefore found to be identical to Complainant’s marks. See Volkswagen of America, Inc. v. Compugraphic FA 96265 (Nat. Arb. Forum Jan. 16, 2001) (Holding that the domain name vwbeetles.com was comprised of Complainant’s famous marks and was identical to Complainant’s marks); America On-line v. QTR Corp. FA 92016 (Nat. Arb. Forum Feb. 10, 2000) (holding that the domain name ICQSMS was identical to Complainant’s registered trademark "ICQSMS" and nearly identical and confusingly similar to Complainant’s other marks such as "ICQ" and "ICQ IT!").

The record in this case failed to disclose any right or legitimate interest in the disputed domain name by the Respondent. There is no evidence to indicate that before notice of this dispute Respondent had made demonstratable preparations for use of the domain name in connection with a bona fide offering of goods or services. Respondent’s assertion that it does business under a company name "Virtual World Internet On-Line Services" was not supported in the record. Complainant’s assertion that the assumed name was taken on by the Respondent in order to defeat the action herein was supported by the greater weight of the evidence. There was no evidence to indicate that the Respondent has been commonly known by the domain name nor is there evidence to indicate that Respondent was making a legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert customers or to tarnish the trademark or servicemarks at issue. By Respondent’s own assertion as derived from Respondent’s letter of September 2000 Respondent specialized in Internet businesses, web site design and development and had several Internet businesses for sale. There being no evidence that Respondent had right or legitimate interest in the disputed domain name, it was concluded Complainant established the second element necessary to establish an abusive domain name registration.

It is undisputed that Respondent shortly after registering vwcabrio.com, the domain name was offered for sale to the highest bidder with a minimum bid of $750. The conduct of the Respondent meets the criteria set out in 4(b)(i). No other purpose can be discerned from Respondent’s conduct except the purpose of sale to the highest bidder, either the Complainant or competitor. Clearly, the cost associated with registering the domain name vwcabrio.com are very small compared to a minimum bid of $750 and up. Respondent’s assertion that vwcabrio.com is nonsensical is without merit. The letters "VW" have become inextricably associated with Complainant’s automotive products and services. "CABRIO" is a shortened form of "Cabriolet", a reference to a specific product manufactured and marketed by Complainant. The Panel finds by using the domain name vwcabrio.com to link to URL MERCHANT where the domain name was placed at auction, Respondent also comes within the circumstances outlined in Policy 4(b)(iv). Respondent was attempting to attract Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement.

It was therefore concluded that the Complainant established the final element necessary to establish an abusive domain name registration under the Policy.

Based upon the above findings and conclusions in pursuant to Rule 4(i), it is ordered that the domain vwcabrio.com be transferred to the Complainant.