Complainant is Audi AG of Germany, represented by HK2 Rechtsanwält of Germany.
Respondent is Sikes Information Systems of the United States of America.
The disputed domain names <audi-online.com>, and <audis-online.com> are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009. On February 2, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On February 2, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2009. Respondent filed an informal Response with the Center on February 11, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on March 4, 2009. 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.
Complainant is Audi AG of Germany. Complainant is a car-manufacturer with its cars being sold worldwide. Complainant holds both national and international trademarks containing the string AUDI. Complainant as well as its affiliated companies or authorized dealers, run various websites under domain names including the AUDI trademarks.
The domain names in dispute are registered with Network Solutions LLC. <audi-online.com> was registered on July 8, 1999 and <audis-online.com> was registered on July 9, 1999 (herein called the “Domain Names”).
Complainant submits that several decisions in UDRP proceedings have affirmed that AUDI is a well-known trademark that acquired a strong reputation and that the trademark is both distinctive and famous.
Complainant contends that Respondent's use of “audis” in its Domain Names is the plural or genitive of “audi” and that the term “online” is generic and is the e-commerce equivalent of “shop” or “store” in the bricks and mortar environment. Complainant asserts that by adding a descriptive term to a known trademark or name does not render it different or distinctive from that trademark or name.
Complainant asserts that there is no indication of 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. Complainant also asserts that its use of its marks predates the registration of the dispute Domain Names by approximately 80 years.
Complainant says that the Domain Names display the same website which shows a standard Internet page of the hosting provider EarthLink which advertises “affordable hosting services”. Complainant submits that this constitutes a commercial use of the Domain Names for the purpose of diverting customers to the offerings of a third party's business. Complainant contends that the displaying of an advertisement is aimed to achieve financial benefits, and in this case a reduction of the hosting costs or the support of a third party's business. Complainant argues that using a third parties' trademark for financial gain by directing Internet traffic to other commercial websites is not a right or legitimate interest under the Policy and also suggests that by offering communication services like interest hosting, it violates Complainant's international trademark AUDI No. 879638 and the German trademark AUDI No. 39941866.0. It is for that reason that the Complainant submits that the displaying of the respective advertisement constitutes no bona fide offering of goods.
Complainant states that Respondent is not commonly known by “audi” or “audi-online” and that the name used by Respondent for the registration of the Domain Names and on the websites is “Sikes Information Systems”. Complainant asserts that Sikes Information Systems is not a licensee.
Complainant also suggests that by Respondent using the Domain Names for advertisements, it constitutes a commercial use, and that by registering the Domain Names Respondent prevents Complainant from using them. Complainant states that Respondent has not actively used the Domain Names, as the content available under the Domain Names has not changed substantially over the last nine years.
Complainant also asserts that Respondent has registered similar domain names affecting other well known trademarks of automobile manufacturers for the purpose of passive holding. Complainant maintains various websites similar to the domain names which present what it believes to be bogus content of car related information, such as <mazda-online.com>, <mazdas-online.com> and <volkswagens-online.com>. Complainant asserts that Respondent holds at least five domain names which follow the same pattern; a combination of a well-known auto trademark and the generic term “online”. Complainant also asserts that all these domain names have been “parked” over a period of more than eight years without any meaningful usage. Complainant asserts that this proves that Respondent has in-depth knowledge about the automobile industry and therefore knows of Complainant's trademarks.
Complainant argues that Respondent or its provider draws profit from Complainant's famous trademark by catching the attention of users which are looking for Complainant's products. Complainant contends that the above circumstances demonstrate Respondent has registered the Domain Names in bad faith.
Respondent is Sikes Information Systems of United States of America. The papers in this case were also served on the administrative contact for Respondent. The Administrative Contact responded by email on February 11, 2009, stating that whilst he is listed as the Administrative Contact on the Domain Names, he has not worked for the registrant Sikes Information Systems for some nine years, nor does he have an active relationship with Respondent. He states that he is unsure of the exact date of his employment termination and suggests that he can examine archive records to ascertain that date if it is deemed necessary.
The Administrative Contact states that at no time has he been a stockholder, owner, or other form of vested party in Sikes Information Systems, saying that his name appears in the record as that of an employee appointed to perform the task of system administration. He states that he has contacted the hosting party Earthlink to have his name removed from the Domain Names but they are unable to assist him.
Accordingly, there is effectively no response from Respondent and the Panel proceeds on the basis that Complainant's contentions stand uncontradicted.
Complainant is the owner of the AUDI trademark (hereinafter “the Trademark”).
There is merit in Complainant's submission that Complainant is the owner of the Trademark and that Respondent's use of “audis” in its domain name is the plural or genitive of “audi” and that the term “online” is generic and is the e-commerce equivalent of “shop” or “store”. Equally, there is force in the argument that by adding a descriptive term to a known trademark or name does not render it different or distinctive from that trademark or name.
It is amply clear that the Domain Names include the Trademark AUDI and that the Trademark is clearly identifiable within the Domain Names. Respondent has had the opportunity to do so but has declined to explain why it registered two domain names comprising or containing the word audi. As a result, the Panel has no difficulty in finding that the Domain Names are confusingly similar to the Trademark.
It is therefore found that Complainant has rights in the Trademark, that the Trademark comprises a dominant and confusing part of the Domain Names, and that the requirements of paragraph 4(a)(i) of the Policy are met.
Respondent is not apparently affiliated with Complainant in any way and has not been authorized by Complainant to use and register its trademarks or to seek the registration of any domain name incorporating the Trademark.
The registration and use of the Trademark preceded the registration of the Domain Names. The Domain Names make an obvious and direct reference to the Trademark and motor vehicles manufactured by AUDI.
Complainant argues that the Domain Names resolve to a website operated by a hosting provider EarthLink which advertises “affordable hosting services” and that this constitutes a commercial use of the Domain Names for the purpose of diverting customers to the offerings of a third party's business. This assertion is not disputed. The Panel finds that such activity is not consistent with any rights or legitimate interests on Respondent's part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that a respondent has registered and uses the domain name in bad faith.
It is not difficult, in the absence of any evidence to the contrary, to infer that Respondent knew or must have known of Complainant's Trademark at the time it registered the Domain Names. AUDI is a well-known trademark with a well-established and widespread international reputation.
Complainant asserts that Respondent has registered similar domain names affecting the well known trademarks of other automobile manufacturers and that this has been done for the purpose of passive holding. Evidence of a pattern of questionable domain name registrations may be taken into account in drawing certain influences. This coupled with the allegation that Respondent is benefiting from some form of financial benefit from the hosting provider EarthLink is plausible. It also stands uncontradicted.
This enables the Panel to conclude that the Domain Names were both registered and used in bad faith in accordance with 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 names <audi-online.com>, and <audis-online.com> be transferred to the Complainant.
Clive L. Elliott
Dated: March 23, 2009