WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AUDI AG v. Cambridge
Case No. DBIZ2002-00046
1. The Parties
Complainant is AUDI Aktiengesellschaft, Ingolstadt, Germany, represented by HK2 Rechtsanwalte, Berlin, Germany.
Respondent is according to the Whois database Cambridge, Miami, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <avant.biz>. The registrar is iHoldings.com, Inc. d.b.a. Dotregistrar.com, Miami, FL, United States of America.
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on April 25, 2002. The fees prescribed under the STOP Rules and the WIPO Supplemental STOP Rules and the STOP Schedule of Fees have been paid by the Complainant.
The Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding on May 28, 2002, to the Respondent in the prescribed manner, setting a deadline of June 17, 2002, by which the Respondent could file a Response. The Notification was also sent to the Complainantís representative. The Center also sent a copy of the Complaint (without attachments) to ICANN and the Registrar, 007 Names.
The Respondent failed to file a Response in the time allowed and has not filed a Response to date as far as the Panel is aware.
A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative on June 24, 2002.
The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center and on July 10, 2002, the Center notified the parties of the appointment of the Panel and at the same time forwarded the case files to the Panel.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
All other procedural requirements appear to have been satisfied.
4. Factual Background
The Complainant is one of the world's largest car-manufacturers. Cars of the Complainant are sold worldwide. The Complainantís Group turnover worldwide was EUR 22,000,000,000.00, the EBIT more than EUR 1,300,000,000.00. The Complainantís group employs approximately 51.000 employees. Complainant delivered approx. 83,000 cars in the United States in 2001.
This Complaint has registered the trademark AVANT in many countries around the world including the United States. Copies of the registration certificates were enclosed as annexes to the Complaint. The mark is used for AUDIīs station wagon program.
5. Parties Contentions
The following is taken from the Complaint and is not contested by the Respondent.
1. With the exception of the generic Top Level Domain "biz" the domain name <avant.biz> is identical to the trademark AVANT in which the Complainant has rights. See WIPO Case No. D-2000-0277, Deutsche Bank AG v. Diego-Arturo Bruckner.
2. The Respondent should be considered as having no rights or legitimate interests in respect of the domain name <avant.biz> because:
- he is offering the domain for sale. According to the .biz Registration Restrictions registrations in the .biz TLD must be used or intended to use primarily for bona fide business or commercial use. The registration of a domain name solely for the purpose of selling, trading or leasing the domain name for compensation shall not constitute such bona fide use;
- there is no relationship between the Complainant and the Respondent and the Respondent is not a licensee of the Complainant and no permission or consent has been granted to the Respondent to use the AVANT mark or to apply for any domain name incorporating this mark (see WIPO Case No. D2000-0277, Deutsche Bank AG v. Diego-Arturo Bruckner; and WIPO Case No. D2000-0023, Parfums Christian Dior bv. QTR Corporation);
- the Respondent is not commonly known by the domain name <avant.biz>, its company name does not include the string AVANT:
- the Respondent does not hold any registrations of the mark AVANT. Database searches to this effect show a negative result;
- the Respondent did not use or prepare to use the domain name <avant.biz> or a name corresponding to the domain name in connection with bona fide offering of goods, because according to the rules of the registration procedure, Respondent has been informed of the IP claim of the Complainant during registration and confirmed his application for registration of the domain name despite this IP Claim. Therefore, its registration of the domain name necessarily includes an infringement of the Complainantís rights.
3. The domain name should be considered as having been registered in bad faith because:
- the professional offering of the domain for sale via the website of his administrative contact domaincollection.com proves that Respondent has registered the domain name primarily for the purpose of selling the name to Complainant or a competitor for an amount that excesses the out of pocket costs of registering the domain name;
- the domain name indicates no reference to the Respondent;
- the Complainantís trademark AVANT is being highly promoted worldwide and therefore well known to public and thus the Respondent had kowledge of the trade name of the Complainant, both in fact and as a matter of law (see WIPO Case No. D2000-0091 Finter Bank Zürich v. Gianluca Olivieri);
- the registration, despite the IP Claim and the famous trade mark of the Complainant, indicate that the Respondent primarily registered the domain for the purposes of selling, renting, or otherwise transferring the name registration to the Complainant or a competitor of his;
- since the trademark AVANT is world famous and commonly known for the products of the Complainant, consumers and business partners of the Complainant are expecting to find Information of the Complainant under domain names consisting of the trademark of the Complainant as Second Level Domain and any generic or cc-TLD. Many Internet users find Internet pages of world famous companies by typing names or trademarks directly into their web-browser. By using the domain name <avant.biz> the Respondent misleads those users and thus attracts far more Internet Users to his website than he would ever be able to under his own. This indicates that the Respondent Ė in case he should, despite the offer at domaincollection.com, not sell the name Ė intentionally attempts to attract, for commercial gain, internet users to his web site by creating likelihood of confusion with the Complainantís mark.
As mentioned above under 3, the Respondent has not filed a response in accordance with the Rules, Paragraph 5 and regrettably no other information on or by the Respondent has been presented to the Panel.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the STOP, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the STOP directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
1. AVANT is registered and used as trademark by Complainant in a number of countries around the world including in the country of residence of Respondent, USA.
The domain name <avant.biz> is identical to the trademark AVANT except for the addition ".biz".
The prerequisites in the STOP, Paragraph 4(a)(i) are therefore fulfilled
2. The Complainant has neither explicitly nor tacitly licensed nor otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Respondent has not demonstrated that he has any prior rights or other independent, legitimate interests in the domain name.
Further AVANT is to the best of the Panels knowledge not a generic word or a commonly used word in the American English.
The prerequisites in the STOP, Paragraph 4(a)(ii), cf. 4(c) are therefore fulfilled.
3. Paragraph 4(a)(iii) of the STOP further provides registration or use in bad faith.
Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
The mark was protected and used in the country of residence of the Respondent at the time of registration of the domain name. In addition the AVANT mark must be considered to be quite well known within the automobile sector. Under these circumstances and given the fact that AVANT has no commonly known meaning in English, the Panel finds that Respondent must have had knowledge of Complainant's rights to the mark AVANT when he registered the contested domain name and that the registration of the domain name at least will have the effect that Complainant is prevented from reflecting their mark in the corresponding .biz gTLD and will inevitably be likely to disrupt the business of Complainant.
Further, it is clear from the presented and uncontested facts that Respondent actually offers the contested domain name for sale for an - at present - not specified amount of money.
Paragraph 4(a)(iii) cf. Paragraph 4(b) is thus fulfilled.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the STOP are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, and that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the domain name has been registered or is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the STOP, the Panel requires that the registration of the domain name <avant.biz> be transferred to the Complainant.
Dated: July 12, 2002