{
    "case_number": "CAC-UDRP-103042",
    "time_of_filling": "2020-06-05 09:08:00",
    "domain_names": [
        "vwidtalk.com",
        "passatworld.com",
        "clubtouareg.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Volkswagen AG"
    ],
    "complainant_representative": "Lubberger Lehment Rechtsanwälte Partnerschaft mbB",
    "respondent": [
        "Legal Department"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a renowned car producer. Among its most famous car models are \"VW Passat\" and \"VW Touareg\". The Passat model is produced and sold worldwide since 1973. The Touareg model is produced and sold worldwide since 2002 and has won several awards during the years.  ID is the name of a new series of fully electric vehicles that was first presented at the 2016 Paris Motor Show.  \r\n\r\nThe Respondent describes itself as an integrated multi-platform media company. Its social networks and websites work as audience aggregation places addressed to engaged subject-matter experts, enthusiasts and businesses alike. The Respondent owns more than 800 websites and establishes or acquires online discussion forums and social media communities in different fields, including the automotive field.  \r\n\r\nThe disputed domain names are <vwidtalk.com>, registered on 18 October 2019; <passatworld.com>, registered on 4 October 2004; and <clubtouareg.com>, registered on 6 December 2003. These domain names give access to websites containing discussion forums where businesses can advertise their own goods and services.  \r\n\r\nOn 3 March 2020, the Complainant sent a cease and desist letter to the Respondent, requesting, inter alia, to delete the disputed domain names. The Respondent declined the Complainant's request based on the fact that it had not infringed the Complainant’s rights, that the disputed domain names were registered and used in good faith as there was no suggested affiliation, sponsorship or endorsement by the Complainant. The Respondent also informed that a non-affiliation disclaimer was included on the websites.  \r\n\r\n",
    "other_legal_proceedings": "The Panel is not aware of any other pending or decided legal proceeding related to the disputed domain name.",
    "no_response_filed": "The Parties’ contentions are the following.  \r\n\r\n1. The Complainant's contentions  \r\n\r\na) Identity or confusing similarity of the disputed domain names to the Complainant's trademarks  \r\n\r\nThe Complainant asserts that the disputed domain names are confusingly similar to its trademarks, because they reproduce the Complainant's trademarks with the addition of a generic term, which is irrelevant for the purpose of assessing confusing similarity under Para. 4(a)(i) of the Policy.  \r\n\r\nb) Lack of rights or legitimate interests \r\n\r\nThe Complainant further asserts that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. Rather, it is using the said domain names to provide marketing\/advertising opportunities to its business clients. The fact that the websites operated under the disputed domain names are designed as customer forums or enthusiast pages is irrelevant and this set up is the core part of the Respondent's business strategy. The suffixes \"talk\", \"world\" or \"club\" do not indicate that the sites are devoted to a noncommercial fan platform. It is well-established that a domain name holder has no legitimate interest in cases where commercial activities are the primary driver of alleged fan sites. Moreover, even if the domain names were used for true fan sites, it is not legitimate to register a domain name that is identical to a third party's trademark. The same principle should apply when the domain name consists of the Complainant’s trademark with the addition of a generic term that is not descriptive for a fan site or an enthusiast forum. Thus, the Respondent is using the disputed domain name to create confusion among Internet users who may think that there is a connection between the Complainant and the Respondent. \r\n\r\nc) Registration and use in bad faith \r\n\r\nRegarding bad faith, the Complainant alleges that by registering and using the disputed domain names for its business activities as a marketing company, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites. The sole purpose for registering and using the disputed domain names is to allow the Respondent's customers to directly approach consumers and to place advertising on the websites. Therefore, the Respondent takes unfair advantage of the Complainant's well-known trademarks. In relation to the disclaimers that the Respondent added to the websites, the Complainant points out that these disclaimers are not suitable to exclude the confusion, and in any case, should not be taken into account as they were added to the websites only after having received the Complainant's warning letter. \r\n\r\n2. The Respondent's contentions \r\n\r\nPreliminarily, the Respondent objects to the Complainant's allegation that the Respondent is a mere \"marketing company\". The Respondent maintains that its business essentially consists of a media and social network business where clients may also place their advertisements. Through its more than 800 websites and 125 million visitors per month, the Respondent has created communities of consumers that offer a unique opportunity to major corporations to spread their product message to the vast audience that come to the websites, to be with like-minded people in a way that is not different from any other social media platform. The Respondent's global reputation lies in its having created a family of forum websites for people to meet and share their interests in many areas, such as automobiles, home goods, sports equipment, electronics, outdoor and health related products, etc. \r\n\r\nThe forum websites offer to visitors and members Internet spaces to have a virtual \"club\", where they can meet to \"talk\" about products in a \"world\" community. This is the reason why these three words mentioned above were added to the Complainant's trademarks TOUAREG, PASSAT and VWID. The Respondent incorporated these trademarks in its domain names to describe the content of the websites. Thus, the Respondent has registered and is using the disputed domain names legitimately as nominative fair use under Para. 4(c)(iii) of the Policy . \r\n\r\nThe Respondent further contends that the Complaint should be considered outside the scope of the UDRP as it is essentially a claim for trademark and copyright infringement. \r\n\r\na) Identity or confusing similarity of the disputed domain names to the Complainant's trademarks \r\n\r\nThe Respondent does not contend that the Complainant has good standing in this proceeding under Para. 4(a) (i) of the Policy. \r\n\r\nb) Lack of rights or legitimate interests \r\n\r\nThe Complainant failed to meet its burden of proof under Para. 4(a)(ii) of the Policy as it merely filed a perfunctory complaint that the Respondent lacks rights or legitimate interests because it provides marketing\/advertising opportunities to its business clients. \r\n\r\nThe Respondent admits that it is also providing marketing opportunities to its business clients, but stresses that its business resolves around offering pinpointed fora for visitors to meet, compare notes, and talk to like-minded consumers about their products. The Respondent operates through a business model of creating a social network of forum websites. The Complainant has not offered prima facie showing that this business model is unlawful, targets or invades the Complainant's rights.\r\n\r\nThe Respondent is using the disputed domain names in connection with a bona fide offering of services as the Complainant's trademarks were incorporated in the disputed domain names only as descriptive identifiers. The addition of the generic words \"club\", \"world\" and \"talk\" functionally identify the domain names as social platforms distinct from the trademarks distinct names that visitors identify exclusively with the Respondent. \r\n\r\nThe Respondent began offering its services since many years before notice of any dispute and the Complainant was well-aware of the Respondent's activity as it purchased advertisements from the disputed websites, without ever questioning the Respondent's lawful rights to the registration of the domain names and its business model. Thus, according to the Respondent, the Complainant should be deemed to have abandoned its claim under the doctrine of laches. \r\n\r\nc) Registration and use in bad faith \r\n\r\nThe Respondent points out that the Complainant does not identify which of the four factual circumstances under Para. 4(b) of the Policy supports a claim of registration and use in bad faith. According to the Respondent, this is due to the fact that the Complainant is confusing trademark infringement with cybersquatting.\r\n\r\nIn the absence of any clarification from the Complainant, the Respondent presumes that the Complainant is asserting bad faith registration and use of the disputed domain names under Para. 4(b)(iv) of the Policy. In this instance, the Respondent stresses that the Complainant failed to prove the existence of \"a likelihood of confusion with the complainant's mark[s] as to the source, sponsorship, affiliation or endorsement of [Respondent's] website[s]\". The visitors of the relevant websites are not deceived or misled into believing that these are official websites of the Complainant. The activity performed through these websites is unlike any activity performed by the Complainant and there is no proof that the domain names were registered and are being used in bad faith. The Complainant only made generic bad faith assertions, which, by themselves, are insufficient to conclude registration and use of the disputed domain names in bad faith. \r\n\r\nThe inclusion of the Complainant's trademarks in the disputed domain names and use of them to direct visitors to the relevant forum websites amounts to a nominative fair use, according to the main UDRP jurisprudence deriving from the Kittinger and Oki Data cases. Both these cases and the many others stemming therefrom, stand for the proposition that incorporating trademarks in a domain name is not prima facie evidence of bad faith. Several panels have held that the truthful, nominative, fair use of a trademark in connection with the sale of goods and services that are properly identified by the trademark does not constitute bad faith. The same consideration should apply to the Respondent's fora, where the incorporation of the Complainant's trademarks is legitimate as the Respondent is truthful in identifying, and therefore describing, the services it provides. \r\n\r\nAs a further defence, the Respondent submits that the Complainant acquiesced to the registration and use of the disputed domain names, and that the Complainant's assertion that it only recently became aware of the disputed domain names is false. Indeed, the Complainant failed to disclose that at least since 2013, it purchased advertising from the relevant websites and most likely had knowledge of the Respondent's business model since before that year. Under these circumstances, the Complainant's failure to take any action in relation of the disputed domain names should be considered a consent to their registration and use giving a rise of rights or legitimate interests, and rejection of the claim of registration and use in bad faith. \r\n\r\nAs to the disclaimer, the Respondent points out that it decided to include it after receiving the Respondent's warning letter, although it thought that it was not necessary. In fact, there has never been any issue of confusion among consumers as to the “source, sponsorship, affiliation, or endorsement” of the Respondent's websites. The Complainant's ownership information is clearly displayed as a recurring footer on the bottom of each webpage of the domain names at issue, as well as in the “About us”, \"Terms of Use\", \"Privacy Policy\", \"Help\" and \"Contact Us\" sections located on the footer of each page of the domain names at issue. The Respondent has never received, and does not expect to receive any complaints or comments from users that associate the Complainant with the Respondent's online communities. The Respondent is aware of the fact that disclaimers cannot by themselves cure bad faith, when bad faith has been established by other factors, but disclaimers have sometimes been found to support other factors indicating good faith and legitimate interest, especially if they are sufficiently clear and prominent. \r\n\r\nd) Reverse Domain Name Hijacking \r\n\r\nThe Respondent asks the Panel to declare that the subject Complaint has been brought in bad faith and therefore to sanction the Complainant under Para. 15(e) of the Rules. In this regard, the Respondent argues that the Complainant essentially filed a perfunctory complaint without establishing the Respondent's lack of rights or legitimate interests in the disputed domain names, or that the domain names were registered and have been used in bad faith. The Complainant did not object to the registration and use of the disputed domain names for more than two decades but acquiesced to the Respondent's activities through its continuing business relations. Only now, a Complaint has been filed, but it falls outside the scope of the UDRP, as it not based on a cybersquatting, but on a trademark\/copyright infringement claim. In the Respondent's view, the real purpose that is behind the filing of the UDRP is that the Complainant has an interest in using the disputed domain names for its own activities. This belief is further supported by a statement to that effect contained in the Complaint. Therefore, the Respondent maintains that the Complainant is using the Policy to wrest the disputed domain names despite being aware of the fact that it is not entitled to these names. \r\n",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy). \r\n",
    "no_rights_or_legitimate_interests": "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 names (within the meaning of paragraph 4(a)(ii) of the Policy).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy). ",
    "procedural_factors": "Both the Complainant and the Respondent have submitted unsolicited supplemental filings. Para. 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Para. 12 of the Rules provides that it is for the Panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Accordingly, unsolicited supplemental filings are usually discouraged unless in exceptional circumstances, and when their contents are material to the decision of the case. \r\n\r\nThe Panel notes that the Complainant’s supplemental filing is only a reply to the Respondent's statements. However, under the Rules, each Party has the right to submit only one single pleading. Most of the statements included in the supplemental filing could have been addressed already in the Complaint. With respect to the reverse domain name hijacking claim, it is up to the Panel to decide based on the elements at hand without need for the Complainant to reply to the Respondent’s statements. In relation to the fact that the Complainant was not aware of the existence of the disputed domain names before the dispute arose, and to the consequent fact that the Complainant did not acquiesced to the registration and use of the disputed domain names, the Panel is of the opinion that this additional clarification is not essential to take a decision on this case, for the reasons further discussed below.\r\n\r\nIn view of the foregoing, the Panel decides to disregard the Complainant supplemental filing. \r\n\r\nAlso the Respondent’s supplemental filing is merely a reply to the Complainant’s late submissions. Therefore, for the same reasons mentioned above and in line with its duty to ensure that the parties are treated with equality, the Complainant will also not take into account the Respondent’s supplemental filing. \r\n\r\nIn addition to the above, the Panel noted that the remedy sought for the disputed domain names was revocation. As revocation is not among the available remedies under a UDRP proceeding, the Panel issued a procedural order requesting the Complainant to indicate, for each of the disputed domain names, what was the required remedy. The Complainant clarified that it was seeking the cancellation of all the disputed domain names. \r\n",
    "decision": "Accepted",
    "panelists": [
        "Angelica Lodigiani, Nathalie Dreyfus, Douglas M. Isenberg"
    ],
    "date_of_panel_decision": "2020-08-12 00:00:00",
    "informal_english_translation": "The Complainant is the owner of the following trademarks:\r\n  \r\n- TOUAREG (word), European trademark registration No. 1984152, claiming a priority date of 4 December 2000, covering goods and services in classes 12, 28 and 37; \r\n\r\n  - VW (word), European trademark registration No. 1354216, claiming a priority date of 20 October 1999, covering goods and services in classes 4, 7, 9, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41 and 42;  \r\n\r\n- ID (word), International registration No. 1441120, claiming a priority date of 7 May 2018, covering goods and services in classes 9,12, 28 and 35, and 37;  \r\n\r\n- I.D. (word). European trademark registration No. 15612104, claiming a priority date of 1 July 2016, covering goods and services in classes 12, 28, 35 and 37;  \r\n\r\n- PASSAT (word), European trademark registration No. 700740, claiming a priority date of 11 December 1997, covering goods and services in classes 4, 5, 6, 7, 8, 9, 12, 14, 16, 18, 25, 27, 28, 34, 36, 37, 39 and 41.  \r\n",
    "decision_domains": {
        "VWIDTALK.COM": "",
        "PASSATWORLD.COM": "",
        "CLUBTOUAREG.COM": ""
    },
    "panelist": null,
    "panellists_text": null
}