WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. Jose Santos
Case No. D2007-0344
1. The Parties
The Complainant is Audi AG, Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Jose Santos, Porto, Portugal.
2. The Domain Names and Registrar
The disputed domain names
are registered with Go Daddy Software, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 12, 2007, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain names at issue. On March 13, 2007, Go Daddy Software, Inc. 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 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 March 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2007.
The Center appointed Adam Samuel as the sole panelist in this matter on April 24, 2007. 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 well-known car manufacturer. It owns registered trademarks for the name AUDI in a number of different countries going back to 1925.
5. Parties’ Contentions
What follows are the Complainant’s contentions. The Complainant owns trademarks in or including the name AUDI and has done so since 1925. It, affiliated companies and authorized dealers use websites including the AUDI trademark. The domain names in issue are composed of various TLD-indicators like “com”, “biz”, “org”, “net”, “infor” or “tv” and a bipartite second level domain consisting of “audi” and “channel” or “tv”. Generic TLD-indicators like “com” are not to be taken into consideration due to their mere descriptive function in considering whether the domain name is confusingly similar to the Complainant’s trademark. The same applies to country code TLD-indicator “tv” which is widely used as a sign for television in domain names. Adding descriptive terms like “channel” or “tv” to a known trademark or name does not render the combinations different to or distinctive from that trademark or name. “Channel” or “tv” may give the impression to internet users that the domain names at issue are associated with the Complainant’s TV programme. Hence the domain names in dispute appear to be at least confusingly similar to the Complainant’s trademark.
The Complainant also contends that once the Complainant has asserted that the Respondent has no rights or legitimate interest in a domain name, the burden of proof shifts to the Respondent. There is no indication of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. The Respondent is trying to sell the domain names while exploiting them for advertisement. All the domain names in issue are linked directly to the same website. Any requests for this website automatically start a popup window containing advertisements for third parties’ products. The Respondent is not commonly known by “audi”, “audi tv” or “audi-channel”. His name is quite different. Given the worldwide fame of the Complainant’s trademark, AUDI no non-commercial fair use is conceivable. The illegitimate use of a domain name that is confusingly similar to a famous trademark over a long period of time evidences lack of rights or legitimate interests in it. The website to which the domain names resolve seems to be unchanged since December 2005.
The Complainant further contends that the circumstances of the registration indicate that the Respondent intended to register the domain names in issue in order to prevent the Complainant from registering them and to impel the Complainant to acquire the domains from the Respondent for money. The Complainant launched its TV programme “Audi Channel” in October 2005. Audi Channel was the first TV established by a car manufacturer to promote its automobiles. Press releases relating to the launch were widely reported especially on the internet. Shortly afterwards, the Respondent registered all the domain names in dispute. After confirmation of the registrations, the Respondent added to Alan Moore’s posting on the subject the following comment:
“DOMAINS FOR SALE in
The Complainant states that “Audichannel” on this page is linked to the same website as the other disputed domain names.
The Complainant submits that Respondent evidently knew of the Complainant’s marks and the TV project. The Respondent intended to forestall registration by the Complainant in order to gain profit by selling the domains to the Complainant. The offering of thirteen domains for sale constitutes domain name trafficking. The circumstances of the advertisement indicate that the Respondent’s intention was to gain valuable consideration from selling the domain names in excess of its out of pocket costs.
The Complainant further submits that inactive holding of a domain name resolving to a website that displays an unmodified sales offer for more than a year reveals bad faith use when no possible use in good faith can be conceived in view of the fact that the Complainant has a well known trademark. The registration of a domain name that is (almost) identical to a famous trademark without authorization is in itself evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the 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. Identical or Confusingly Similar
The domain names in dispute all contain the word “audi” and either “channel” or “tv”. They all then have a suffix of either “.biz”, “.com”, “.info”, “.net”, “.org”or “.tv”. The Complainant has owned trademarks in the name AUDI since 1925. For the purposes of this case, the Panel only has to refer to the printout of the Deutsches Patent- und Markenamt (German Patent and Trademark Register) under Registration Number 1123876 which indicates that the Complainant has owned the relevant trademark in Germany since at least 1988.
It is well-established that, since in order to make a domain name work, a suffix of the type used here is necessary, these must be disregarded for the purposes of determining confusing similarity under the Policy. The only issue here is whether the addition of “channel” or “tv” removes the confusing similarity of a domain name to a trademark. In general, the use of generic words after a trademark name does not remove confusing similarity unless they have the effect of rendering indistinct the trademark name itself.
In National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338, the Panel said with respect to <nascargames.com>, <nascargames.net>, <nascar-games.com>, <nascar-games.net>, <nascarinteractive.com> and <nascartvchannel.com>:
“The only distinctive part of all the disputed domain names is the Complainant’s NASCAR mark: the words “games, interactive and tv channel” are merely descriptive and in no case create a mark different from the Complainant’s. The Panel therefore finds the Complainant has satisfied section 4a(i) of the Policy with regard to all six (6) of the disputed domain names, i.e., the disputed domain names are confusingly similar to Complainant’s NASCAR trademark.”
The word “audi” only has an independent meaning in Latin. The addition of words such as “channel” or “tv” do not give it any other meaning. It follows that the Complainant has proved that the domain names in issue are all confusingly similar to the trademark AUDI in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not called “Audi” or anything similar and does not appear to trade under that name. There is no evidence that the Complainant has authorized the Respondent to use any of its trademarks. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the evidence in case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant’s assertion that it has never authorized the Respondent to use any of its trademarks does not strictly speaking reverse the legal burden of proof which remains with the Complainant throughout under Paragraph 4(a) of the Policy. However, it shifts the evidential burden or the burden of non-persuasion on that question to the Respondent. If the Respondent fails to contradict the assertion in question, the Panel must find in favour of the Complainant on it.
C. Registered and Used in Bad Faith
Alan Moore wrote an article on the SMLXL website about the Complainant’s launch of its own television channel on October 28 2005. The Respondent commented on this on January 26, 2006 solely to say that one of the domain names in issue here, <audi-channel.com> was for sale. The domain names <audichannellive.com>, <audi-channel.net>, <audichannel.tv> and <audichannel.net> were registered by the Respondent on November 13, 2005. <Tvaudi.com>, <theaudichannel.com>, <auditv.com>, <audichannel.info>, <audichannel.org>, <audichannel.biz> were all registered the following day.
All the domain names in issue resolve to a website “ www.bestlinks.biz”. Currently, nothing appears there. However, on March 23, 2007, this website said:
If you are interested in buying the following domains, please contact: firstname.lastname@example.org”
It listed the domain names in issue and finished
The first name is the Respondent’s.
Paragraph 4(b) of the Policy reads:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;”
(ii) The timing of the registrations very shortly after the Complainant launched its television channel, the response to the Moore article on the subject offering the domain names for sale just over two months after their registration and the use of the domain names to market their own sale all suggest that the Respondent has acquired the domain names primarily for the purpose of selling the domain name registration to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses. The only use evidenced in the file has been to resell the domain names in issue. All this suggests that the Respondent both registered and has used these domain names solely for the purposes of selling them. In doing so, the Panel concludes that the Respondent has registered and used the domain names in question in bad faith.
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 names, <audichannel.biz>, <audi-channel.com>, <audichannel.com>, <audichannel.info>, <audichannellive.com>, <audi-channel.net>, <audichannel.net>, <audichannel.org>, <audichannel.tv>, <auditv.com>, <theaudichannel.com> and <tvaudi.com> be transferred to the Complainant.
Dated: May 8, 2007