WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. Numidia S.p.a.
Case No. D2002-0310
1. The Parties
Complainant is Audi AG, a company incorporated in Germany based in Ettinger Strasse Tor 10, 85045 Ingolstadt, Germany.
Respondent is Numidia S.p.a., based in Via Bronzino 9, 20133 Milan, Italy.
2. The Domain Name and Registrar
The domain name at issue is <audisat.com> (hereinafter Domain Name).
The Domain Name is registered with BulkRegister.com, Inc., 7 East Baltimore St., Baltimore, MD 21202, United States of America (hereinafter Registrar).
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 2, 2002, and subsequently in hard copy on April 5, 2002. The WIPO Center sent an acknowledgment of Receipt of Complaint to Complainant on April 9, 2002.
On April 10, 2002, a request for Registrar Verification in connection with this case was transmitted to the Registrar. On the same day, the Registrar confirmed that: (i) a copy of the Complaint had been received by the same on April 10, 2002; (ii) the domain name under issue is registered with BulkRegister.com; (iii) Respondent is the registrant of the Domain Name; (iv) the Domain Name is currently locked; and (v) the language of the registration agreement for the Domain Name is English.
On April 16, 2002, the Center sent an e-mail to Complainant asking for the transmission of the Complaint Transmittal Coversheet, which was not attached to the Complaint originally sent by e-mail and in hard copy. Complainant complied with this request by e-mail and in hard copy on April 18, 2002, and on April 29, 2002, respectively.
On April 30, 2002, the Center informed Complainant that the Domain Name was mistakenly indicated on the Coversheet Ė i.e., <audi.com> instead of the correct <audisat.com> Ė and requested a correct version of the Coversheet by fax. Accordingly, a fax by Complainant was received by the Center on the same day.
On May 2, 2002, the Center completed the Formal Requirements Compliance Checklist and, on the same date, transmitted to Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) by the required means, setting a deadline at May 22, 2002, by which Respondent could file a Response to the Complaint.
Given that no Response was filed within the deadline above, the Center sent Respondent a Notification of Respondent Default on May 23, 2002.
By e-mail dated May 30, 2002, Respondent informed the Center that it had received the hard copy of the Complaint together with the enclosures only on May 24, 2002, while the documents related to the "Notification of Complaint and Commencement of Administrative Proceeding" had been received only on May 30, 2002. According to Respondent the above material had been sent to Respondentís previous address which changed in June 2001. Consequently, Respondent asked to be restored in terms in order to file its Response together with the relevant enclosures. On June 6, 2002, the Center replied that: (i) all previous communications such as "the Notification of Complaint and Commencement" and the Complaint itself had been timely sent in hard copy on May 2, 2002, at Respondentís known addresses (Numidia S.p.a., Via Omboni, 5, Milano, 20128, Italy, and Administrative/Technical Contact: ALICOM Accounting Ė Gruppo ALICOM, Via Pietro Nenni 210/A, San Giovanni Teatino Ė Sambuceto Ė CH 66020 Ė Italy); (ii) it appears that all addressees had received both documents in hard copy on May 3, 2002; (iii) the above mentioned documentation had been sent to Respondent also by e-mail at its relevant addresses. The Center also advised Respondent that, in any case, according to paragraph 2 (e) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "Either Party may update its contact details by notifying the Provider and the Registrar" and that, should a late Response be submitted to the Center, it was in the sole discretion of the appointed Panel whether or not to consider such late Response.
On July 2, 2002, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding, indicating that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. The date scheduled for issuance of the Panelís decision is July 16, 2002, in absence of any exceptional circumstances.
On July 8, 2002, Complainant submitted a supplemental filing to the Center. On the same date the Center informed Complainant that it is in the sole discretion of the Panel to determine whether to admit and take into consideration any supplemental filing made by the Parties.
The Panel has independently determined and agreed with the assessment of the Center that the Complaint as amended by the Amended Complaint formally complies with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
4. Factual Background
Complainant is the well-known car manufacturing company Audi AG, which has been distributing vehicles in Germany and all over the world for decades. It was founded in 1884 and is registered in the commercial register under the name AUDI AG since 1985.
Complainant has provided evidence of a number of trademark registrations for the word AUDI alone or combined with other words (such as audi quattro, audi sport, audi bank, etc) in many countries, including Germany, the United States and Canada and in the European Union, covering a wide range of goods and services, including satellite products and services (Attachments 7-9 to the Complaint).
5. Partiesí Contentions
A. Complainantís Summarized Contentions
Complainant contends that:
- the Domain Name <audisat.com> is party identical or confusingly similar to Complainantís trademark "AUDI";
- Complainantís trademarks AUDI is a fantasy name and has reached the status of well-known mark;
- the protection of well-known trademarks goes beyond the product categories for which the trademark is used;
- therefore the fact that from the home page of the web site <audisat.com>, the Domain Name is apparently intended to be used in connection with audience survey services has no relevance;
- Respondent has no rights or legitimate interests in the disputed Domain Name <audisat.com>;
- Respondentís Domain Name was both registered and used in bad faith since Respondent "wanted a domain name having an immediate recognizable nature, by taking advantage of the status of the renown of the trademark of "AUDI", without having regard to Complainantís rights;
- Respondent makes no use of the Domain Name in a bona fide offering of goods or services.
Based on the above, Complainant requests the transfer of the Domain Name.
Respondent is formally in default having submitted its Response on June 19 (e-mail) and June 21, 2001 (hard copy), largely after the expiration of the relevant deadline.
6. Discussion and Findings
Paragraph 15 (a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4 (a) of the Policy, Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to complainantís trademark or service mark;
(ii) respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and is being used in bad faith.
A. Preliminary Issue: Respondentís Late Response and Complainantís Supplemental Filing
Before dealing with the merits, the first issue to be addressed is whether the Panelist will consider Respondentís late Response. Under the Rules, this kind of determination is solely within the discretion of the Panelist (see paragraph 10 (a), (d), of the Rules and Talk-City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The main argument alleged by Respondent in its communications to the WIPO Center requesting restoration in terms is that as of June 2001 Respondentís address is no longer that indicated in the Registrarís database. For this reason, the hard copy of the Complaint and relevant enclosures reached Respondent only on May 24, 2002, that is two days after the expiry of the deadline for the filing of a Response.
The Panelist notices however that the address to which the Compliant was dispatched corresponds to that indicated in the Registrarís database attached to the Complaint and is confirmed in the Registrarís reply to the Centerís Request for Registrar Verification.
Moreover, under paragraph 2 (e) of the Rules, it is Respondentís responsibility to provide accurate addresses, by notifying the new contact details to the Provider and the Registrar. It appears from the above that Respondent has failed to notify the Registrar about the change of address which occurred one year ago.
Therefore, all communications to Respondent, both in hard copy and via e-mail, were correctly made at Respondentís addresses as listed in Registrarís Whois database for the registered domain-name holder, the technical contact, and the administrative contact (see Citigroup Inc. v. Lee Yunki, WIPO Case No. D2002-0042; RiskWise L.L.C. v. Domain Strategy Inc., WIPO Case No. D2002-0125).
In addition, Respondentís first communication to the WIPO Center is dated May 30, 2002, while the Notification of Complaint and Commencement of the Administrative Proceeding was sent to Respondent (also) via e-mail on May 2, 2002.
Based on the above Respondentís delay in filing a Response cannot be justified. Therefore the Panelist will consider neither Respondentís late Response nor Complainantís supplemental filing.
B. Identity or Confusing Similarity
The Domain Name is <audisat.com>. Complainant owns various trademark registrations for the word "audi" alone or in combination with different suffixes (such as "audi quattro", "audi bank", "audi sport", "audi center", etc.). None of Complainantís trademark registrations include the suffix "sat".
At first sight the case in hand may seem to fall among those in which the domain name entirely embodies someone elseís renowned trademark to which a more or less meaningful suffix is added. Numerous WIPO decisions in this connection have ruled that the fact that a trademark is incorporated in its entirety, is per se sufficient to establish that the domain name is identical or confusingly similar to the registered trademark (see amongst others Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237; Dr. Ing. H. c. F. Porsche AG v. Simon Harvey, WIPO Case No. D2002-0194).
However, the present case is particular in that "audi" has a semantic value per se. If, in fact, the word "audi" could be regarded as a fantasy name vis-à-vis the business activity of Complainant (car manufacturing), on the other hand it has a semantic value as a productive root in most languages deriving from Latin such as Italian and also in English. In fact it comes from the Latin word "audire" (in English, to listen, to hear) and appears in many English (such as audience, audio, audiology, audiovisual etc.) and Italian (such as audio, audiovisione, audiocassetta, auditel which in Italy is generally defined as a radio and television audience survey system) words. In particular this semantic value becomes apparent vis-à-vis certain products or services such as the one that Complainant itself reports as being indicated in Respondentís web site home page (basically, audience survey of TV and digital satellite services Ė emphasis added).
Moreover, in the case in hand the suffix "sat" stresses the reference to the above activity.
If it is true that the protection of a renowned trademark goes beyond the product categories for which the trademark is used, this wider protection presupposes the utilization of such trademark for linking purposes to achieve, without a justified reason, an undue advantage or to cause a prejudice to the trademark owner. In the case in hand in the Panelistís view there is no such use for the reasons set out above.
The reference made by Complainant to Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 seems not relevant. In that case, "audi" was used in combination with the word "lamborghini", the domain name under issue being <audi-lamborghini.com>. In that case the use of the trademark "audi" to evoke Complainantís products and business activity was clear and even stressed by its combination with the word "Lamborghini" (which, by the way, is a registered trademark of Automobile Lamborghini S.p.a., a subsidiary of Complainant). In that case, the Panelist pointed out that the Internet user was "very likely to understand the addition of LAMBORGHINI as a reference to some relationship or association between the respective companies, which are the owners of the respective trademarks".
On the contrary, the Panelist deems that confusion does not arise in the case in hand.
From a different viewpoint, the fact that Complainant develops satellite-controlled driving and positioning tools and services (as most luxury car manufacturers do) is no sufficient ground to assert the possibility of confusion between the Domain Name and Complainantís trademarks.
Based on the above, the Panelist finds that the Domain Name is neither identical nor similar to Complainantís trademarks. Since Complainant has failed to establish factor (i) under paragraph 4 (a) of the Policy, there is no need to examine the factors (ii) and (iii) of the same.
For the foregoing reasons, the Complaint is denied.
Dated: July 18, 2002