Decision for dispute CAC-UDRP-107323

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns the trademark “VW” which is a shortened version of its company name “Volkswagen”. The sign has been protected in the EU, inter alia, by EU TM no. 1354216 since 31 May, 2001 for vehicles.

The Complainant is a leading automobile manufacturer worldwide and the largest automobile manufacturer in Europe. 

The disputed domain name was registered on January 25, 2024 and is being offered for sale for $4669. 

The Complainant's contentions can be summarised as follows:

1. The disputed domain name identical to the Complainant’s trademark

The disputed domain name <vwtruck.com> is – from a legal perspective – identical to the protected sign and famous trademark “VW”. The addition of the element “truck” is not relevant for assessing the identity of signs here, as the term truck is merely understood as a reference to the field of business in which is active. Therefore, the element “truck” has no own trademark function in the disputed domain name. The TLD “.com” is to be ignored as well for the purpose of assessing the identity, as it only plays a technical function.

2. The Respondent has no rights or legitimate interests in respect of the disuted domain name

The Respondent has no rights or legitimate interest in the disputed domain name <vwtruck.com>. In particular, the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the Complainant and the Respondent. In addition to that, “VW” is a trademark that is well-known worldwide and therefore highly distinctive. As such, the sign is not one traders would legitimately choose unless seeking to create the impression of an association with the Complainant.

3. The disputed domain name registered and used in bad faith

The Respondent has registered and is using the disputed domain name in bad faith. The disputed domain name is identical, at least highly similar to the Complainant’s trademark. For determining bad faith in cases of non-use or passive holding, panels take into account all of the circumstances in each case. Factors that have been considered relevant in applying the passive holding doctrine include (i) the degree of distinctiveness or reputation of the Complainant’s mark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, or (iii) the implausibility of any good faith use to which the domain name may be put.

The Complainant and its trademark “VW” are exceptionally popular and well-known in all parts of the world. The Complainant has been operating under this sign for many decades and across all relevant markets in the world. It is impossible for the Respondent to not become aware of the Complainant before registering the disputed domain name with the Complainant’s name and trademark. A five second online search would have revealed the Complaint’s company.

Finally, there is no plausible good faith use of the disputed domain name by the Respondent. From the perspective of the relevant public, the sign “VW” is exclusively associated with the Complainant. The disputed domain name <vwtruck.com> is clearly directed to the Complainant. By the disputed domain name <vwtruck.com>, the Respondent creates the impression that the disputed domain name leads the user to part of the Volkswagen group or at least an official partner of Volkswagen, which is not the case.

Finally, the fact that the disputed domain name is not in use but is offered for sale and for an excessive price also allows the conclusion that the Respondent is acting in bad faith. This is another indication that the disputed domain name is aimed directly at the Complainant, who is expected to be interested in the disputed domain name and could be prepared to invest such a price to obtain it. This supports the inference that the Respondent acquired the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of its out-of-pocket costs.

 The contentions of the Respondent can be summarised as follows:

1. Generic Nature of "VW"
   The acronym "VW" is not exclusively associated with Volkswagen. It is a commonly used abbreviation that can stand for numerous phrases, including but not limited to:

   • "Volkswagen" (as used by the complainant)
   • "Virtual World"
   • "Vacation Wagon"
   • "Very Wide"
   • "Vehicle Works"
   • "Valley West"
   • Personal initials or business names unrelated to Volkswagen
     Given its broad applicability, "VW" cannot be monopolized by a single entity.

2. Legitimate Interest in the disputed domain name

   The Respondent contends it registered <VWTruck.com> with a genuine and legitimate interest. The disputed domain name is intended for a general truck-related website, and there is no misleading or deceptive intent associated with Volkswagen. The term "Truck" is also a generic word and does not indicate an exclusive connection to any specific manufacturer.

3. Lack of Bad Faith Registration and Use

   • The disputed domain name has not been used in a way that suggests an association with Volkswagen or its trademarks.
   • There has been no attempt to mislead users into believing that <VWTruck.com> is affiliated with Volkswagen.

4. Precedents on Generic Acronyms
   UDRP panels have consistently ruled that acronyms with multiple meanings cannot be solely claimed by one party unless there is clear evidence of bad faith intent. In this case, "VW" is a widely recognized generic abbreviation with diverse applications beyond Volkswagen’s brand.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name is confusingly similar to the Complainant's prior well known VW mark adding only the generic word "truck" and the gTLD .com which do not prevent said confusing similarity. 

The Respondent is not authorised by the Complainant or commonly known by the disputed domain name which has not yet been used.

Although the Respondent asserts that the disputed domain name was registered for a general truck related site he has submitted no evidence other than a bare assertion that this is the case. Although he asserts that VW is an abbreviation capable of various meanings oddly he gives no explanation for why he chose to register it in the context of trucks when the immediate affiliation of the disputed domain name in the context of trucks would be the Complainant's mark, well known in that field. There is no evidence provided to the Panel of a bona fide offering of goods or services or a legitimate non commercial fair use of the disputed domain name.

The disputed domain name has been offered for sale generally for a sum far in excess of the costs of registration. The Respondent does not explain why this is the case and it is inconsistent with and appears to be evidence against the truth of the assertion the Respondent makes that he registered the disputed domain name for a general truck site.