WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. Dr. Alireza Fahimipour
Case No. DIR2006-0003
1. The Parties
The Complainant is Audi AG from Ingolstadt, Germany, represented by HK2 Rechtsanwälte from Berlin, Germany.
The Respondent is Dr. Alireza Fahimipour from Isfahan, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <audi.ir> (the “Domain Name”) is registered with IRNIC.
3. Procedural History
The Complaint was transmitted to the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2006 by email and on June 27, 2006 in hardcopy. On June 22, 2006 the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On June 24, 2006, IRNIC 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. On June 26, 2006 the Center acknowledged the receipt of the Complaint. The Center verified on June 27, 2006, that the Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR 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 June 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2006. The Respondent did not file a Response. The Center notified the Respondent of his default on July 18, 2006.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on July 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 is a German company and a manufacturer of cars under the name AUDI. The Complainant proved ownership of several relevant trademarks consisting of the word AUDI registered between 1925 and 1999 (Annexes No. 4–12 of the Complaint). Complainant’s products are sold worldwide and the mark AUDI is among the top hundred in the Interbrand Best Global Brands Ranking of 2005 (Annex No. 3 of the Complaint).
The Respondent is a medical doctor who, before the commencement of the proceedings, ran a website under the Domain Name <dr-fahimi.com> offering computer-related products and services (visited through “www.archive.org” on July 20, 2006). In addition, he offered on the mentioned website the Domain Name <audi.ir> for $10’000 (Annex No. 13 of the Complaint). According to the IRNIC Whois-Search conducted on July 20, 2006, the Respondent registered several domain names including famous car companies’ names before the commencement of these proceedings. The Domain Name was registered by the Respondent on November 13, 2004.
5. Parties’ Contentions
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. The Domain Name is identical to the Complainant’s trademark and trade names.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name as there is no relationship between the Respondent and the Complainant. Therefore, the Respondent has no permission nor license to use Complainant’s trademarks. There is neither evidence of use or preparation of use of the Domain Name in connection with a bona fide offering or service nor is the Respondent commonly known by the Domain Name or has acquired a relevant trademark or service mark. The Respondent makes no legitimate non-commercial or fair use of the Domain Name.
3. The Domain Name was registered in bad faith for the purpose of selling, renting or otherwise transferring for valuable consideration in excess of the out-of-pocket expenses related to the Domain Name and preventing the Complainant from reflecting the mark in a corresponding domain name. The Domain Name is being used in bad faith as the passive holding of the disputed Domain Name fosters the aforementioned purposes.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint was properly notified to the Respondent.
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(ii) the Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In accordance with paragraph 4(a)(i) of the Policy, the Domain Name is considered by this Panel to be identical to the trademark AUDI, to which the Complainant has rights, since the Domain Name consists of the identical wording as Complainant’s trademark.
Therefore, the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the Domain Name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) that the overall burden of proof under paragraph 4(c) of the Policy rests with a complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, a domain name. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name.
The Complainant asserts in its contentions that none of the abovementioned circumstances (i)-(iii) are applicable to the Respondent and the Respondent has therefore no legitimate interest in or rights to the disputed Domain Name.
This statement must be regarded by this Panel as prima facie case as the Complainant has regularly less means to establish the negative proof than the Respondent has to evidence his rights and legitimate interests.
The Respondent failed to demonstrate rights to or legitimate interests in the Domain Name. Hence, this Panel regards the Complainant’s contentions as plausible and uncontested.
In conclusion, the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that the respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Respondent has offered the Domain Name on his website for sale.
Additionally, the passive holding of a domain name can be regarded as bad faith use, when no possible use in good faith can be conceived, provided complainant has a well known trademark (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Complainant has a well known trademark which the Respondent must have known when he registered the Domain Name. Furthermore, the Respondent cannot possibly undertake any activities without infringements of Complainant’s and its official dealers’ rights.
This Panel thus concludes that Respondent’s passive holding is a use in bad faith in accordance with paragraph 4(b)(iii) of the Policy.
Concerning paragraph 4(b)(ii) of the Policy, the Respondent registered further several other domain names including famous trademarks of car manufacturers under the ccTLD of Iran. Such conduct is regarded by a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) as a pattern of conduct in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
In conclusion, the Respondent is considered by this Panel to have registered and to use the Domain Name in bad faith according to the Policy, paragraphs 4(b)(i), (ii) and (iii), and that the Complainant has therefore fulfilled the requirements of 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 <audi.ir> be transferred to the Complainant.
Dated: July 28, 2006