WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. The data in Bulkregister.com’s WHOIS database is p
Case No. D2006-1055
1. The Parties
The Complainant is Audi AG, Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is The data in Bulkregister.com’s WHOIS database is p, Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <audicanada.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2006. On August 22, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 22, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2006.
The Center appointed Anders Janson as the Sole Panelist in this matter on October 18, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:
The Complainant is a car manufacturer operating all over the world. The Complainant’s Group turnover was more than EUR 26, 500 millions in 2005. The Complainant’s Group employs approximately 52, 000 employees and produced approximately 811, 000 cars in 2005.
The Complainant has asserted that it holds numerous national and international trademarks comprising “AUDI”. The Complainant has, in the Complaint, put forward a number of registrations. Among the registrations put forward can be mentioned:
- International registration nr. 716147, dated March 12, 1999.
- International registration nr. 622241, dated July 5, 1994.
- International registration nr. 422522, dated May 28, 1976
- International registration nr. 657259, dated November 6, 1995.
- International registration nr. 879638, dated November 25, 1999
- National registration in Canada of the trademark “AUDI”, number 279462, registered May 13, 1983
- National registration in Canada, number 303809, registered June 14, 1985
The Panel notes that the two National registrations in Canada mention that the trademark has been used in Canada at least as early as late autumn 1972.
According to the Complainant, the trademark AUDI is registered for all classes of services and goods and is protected in numerous other countries and is especially in use for goods and services relating to the manufacturing and distribution of vehicles. Furthermore, the Complainant has registered the domain names <audi.com> and <audi.de>. Also, the Complainant or affiliated companies/authorized dealers run country specific pages, e.g. “www.audi.ch”, “www.audi.fr”, “www.audi.it”, “www.audi.es”, “www.audi.co.uk” and “www.audi.us”.
The Panel notes that the registration dates of the trademark predates the registration of the disputed domain name by the Respondent, which was August 5, 2001.
The Respondent is “The data in Bulkregister.com’s WHOIS database is p”. Very little is known of the identity and nature of the Respondent except for the information provided under Technical Contact. The Respondent is in default and, accordingly, has not challenged the conclusions of the Complainant.
The Panel notes that at the time of rendering the decision the website with the disputed domain name displayed a search tool for receiving allegedly the best sales prices for vehicles of various competing car manufacturers.
5. Parties’ Contentions
The Complainant contends that:
- The disputed domain name is identical or confusingly similar to the trademark AUDI in which the Complainant has rights;
- The Respondent has no rights or any legitimate interests in respect of the domain name;
- The domain name is registered and is being used in bad faith; and
- The domain name <audicanada.com> should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds, based on the evidence put forward by the Complainant, established that AUDI is a widely known trademark and that the trademark is both distinctive and famous. The disputed domain name contains the Complainant’s trademark AUDI in its entirety, with the added geographically descriptive term “Canada” and the generic and functional top level domain name “com”. In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. The question is therefore if the addition of the geographical term “Canada” renders the disputed domain name dissimilar to the Complainant’s registered trademark.
As established by numerous UDRP Panels before, the addition of a geographic designation does not render it different or distinctive from the trademark (see for instance Harrods Limited v. John Griffin, WIPO Case No. D2002-0641 and Microsoft Corporation v. Webbangladesh.Com, WIPO Case No. D2002-0769). Furthermore, numerous Panels have found that the fact that a domain name incorporates a complainant’s registered mark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. 2000-1525 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
The disputed domain name <audicanada.com> must therefore be considered confusingly similar to the trademark AUDI. The Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response. In these circumstances, when the Respondent does not have an obvious connection with the disputed domain name, a prima facie showing from the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists. The Respondent has not demonstrated or argued that he or she used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.
In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.
The Panel notes that the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.
The Panel finds that the Respondent most likely was well aware of the Complainant’s famous trademark. The Complainant has numerous trademark registrations, both on an international and national level and it operates several websites containing the trademark. The Respondent must, at the time of the registration of the disputed domain name, have had actual knowledge of the Complainant’s registered trademark. The Respondent most likely knew it would be infringing the Complainant’s trademark rights when registering the disputed domain name. The above-mentioned constitutes, in the circumstance of this case, and in line with previous UDRP cases, bad faith per se and is – isolated from the other facts put forward of the Complainant – enough for this Panel to conclude that the registration of the disputed domain name was made in bad faith and that the Complainant has proven paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <audicanada.com> shall be transferred to the Complainant.
Dated: October 29, 2006