The Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is DNS Administrator, Cykon Technology Limited of Hong Kong, China, self-represented.
The disputed domain name <xaudi.com> is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2017. On May 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 31, 2017, the Respondent submitted an email indicating that it has paid the renewal fee of the disputed domain name.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2017. The Response was filed with the Center on June 22, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on June 29, 2017. 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.
The Complainant, headquartered in Ingolstadt, Germany, is a leading manufacturer and distributor of automobiles sold under the distinctive and well-known Audi brand. The Complainant holds registrations for AUDI and AUDI-formative marks obtained in the European Union (EU), Germany, and numerous other jurisdictions around the world, including China (for example, international trademark no. 657259 registered on February 10, 1996). The Complainant has had a presence in China since 2003, with deliveries of Audi vehicles to China (including Hong Kong1 ) reaching almost 600,000 units in 2014. The worldwide delivery of Audi vehicles in 2016 exceeded 1,800,000 cars. The Complainant’s AUDI mark has been officially recognized as a well-known mark in China, and AUDI has been acknowledged as a well-known or famous mark in several UDRP decisions. See Audi AG v. Mike Gillespie, Gillespie Auto Group, WIPO Case No. D2007-1850; Volkswagen AG v. Zigoumis Constantine, WIPO Case No. D2008-0755.
The Respondent resides in Hong Kong, and registered the disputed domain name <xaudi.com> on June 24, 2008, according to relevant WhoIs records. The disputed domain name currently does not resolve to an active website. Prior to the filing of the Complaint the disputed domain name resolved to a website displaying the title “XAudi.com”, populated with pay-per-click advertising links, and with a banner at the top of the website indicating that the disputed domain name could be for sale. The Respondent is not a stranger to the UDPR, having been a respondent in prior proceedings under the Policy.2 The Respondent is the holder of a large portfolio of domain names, estimated at around 45,000 in several of the cases referred to above. The WhoIs record obtained by the Complainant from Domain Tools reflects that the Respondent is associated as a registrant organization with over 41,000 domain names.
The Complainant submits that it is one of the largest car manufacturers in the world, with worldwide deliveries of Audi cars in 2016 of approximately 1,867,738 cars, ranging from compact cars to sport cars to SUVs, produced in Germany, India, and China. The Complainant provides evidence of its ownership of national and international registrations of the AUDI mark, including in China, where according to the Complainant deliveries of Audi cars in 2014 reached almost 600,000. The Complainant submits that the AUDI mark has an extremely strong reputation and has achieved worldwide recognition as a famous or well-known mark. The Complainant also submits a decision of the Chinese Trademark Review and Adjudication Board in which AUDI was recognized as a well-known mark in China.
The Complainant maintains that the disputed domain name <xaudi.com> is confusingly similar to its distinctive and well-known AUDI mark. The Complainant argues that the addition of the prefix “x” does not serve to distinguish the disputed domain name from the Complainant’s mark, that the prefix “x” has no significance in and of itself, and that accordingly Internet users will intuitively interpret the disputed domain name to refer to the Complainant. The Complainant notes that the Top-Level Domain (“TLD”) (i.e., “.com”) generally is disregarded when assessing identity or confusing similarity.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, it is evident that the Respondent was aware of the strong reputation of the Complainant’s AUDI mark when registering the disputed domain name, which combines the character “x” with “audi”. The Complainant submits that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, but rather with parking pages populated with pay-per-click advertising links, and on which the disputed domain name also was offered for sale. The Complainant concludes that the Respondent’s sole intent in registering the disputed domain name is to capitalize on the renown of the Complainant’s AUDI mark either by selling the disputed domain name or attracting Internet visitors to the Respondent’s pay-per-click website.
The Complainant maintains that the Respondent is not commonly known by the disputed domain name, which was registered in the name of DNS Administrator, Cykon Technology Limited. The Complainant avers that the Respondent has not been authorized to use the Complainant’s AUDI mark. Given the Respondent’s use of the disputed domain name to generate pay-per-click revenues while simultaneously offering the disputed domain name for sale, the Complainant concludes that the Respondent clearly is not making a noncommercial or fair use of the disputed domain name.
The Complainant asserts that the disputed domain name was registered and is being used by the Respondent in bad faith. The Complainant submits that the Respondent is intentionally exploiting the Complainant’s famous and well-known AUDI mark to lure Internet users to the Respondent’s website for financial gain. According to the Complainant, the Respondent acquired the disputed domain name for the purpose of selling the disputed domain name for a price greatly exceeding registration costs, and to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s AUDI mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant requests the transfer of the disputed domain name.
The Respondent asserts that the Complainant has no trademark rights in the word “xaudi.” According to the Respondent, whether a domain name is confusingly similar to a mark can be a subjective matter, and a word with an additional single character prefix or suffix should not by default be held to be confusingly similar to the original word.
The Respondent submits that the word “xaudi” was independently invented by the Respondent, similar to the Respondent’s company name “Cykon”, and other online brands the Respondent has created in some two decades of business. The Respondent states that the word “xaudi” was created with the word “saudi” in mind. The Respondent maintains that “xaudi” and “saudi” sound identical, and that the Respondent’s original plan was to use the disputed domain name to expand the Respondent’s web hosting business in Saudi Arabia and the Middle East region.
The Respondent maintains that the Complainant has not shown the registration and use of the disputed domain name by the Respondent to be in bad faith. The Respondent denies that selling the disputed domain name would constitute bad faith, that the Respondent never contacted the Complainant or any other party seeking to sell the disputed domain, and that the regular buying and selling of domain names is not in and of itself illegitimate or indicative of bad faith.
The Respondent maintains it registered the disputed domain name on June 24, 2008, without knowledge of or recognizing the Complainant’s mark in the disputed domain name, and that the registration of the disputed domain name has been continuously renewed for nine years. The Respondent denies that the disputed domain name has been used in bad faith to cause confusion or mislead the public, and asserts that the Complainant has offered no evidence in support of its assertions to the contrary.
According to the Respondent, the Complainant’s assumption that the disputed domain name is being used to attract Internet visitors for commercial gain also is misplaced. The Respondent submits a parking report for “xaudi.com”, which according to the Respondent demonstrates that over the past year there were very few visitors to the website and only USD 0.10 (ten cents) of total generated revenue. The Respondent represents that the disputed domain name currently is parked only for future development.
The Respondent submits that the website was only a temporary parking page, that the advertisements on the website clearly are unrelated to the Complainant’s business and products, and that the Respondent has no intention to exploit the Complainant’s mark. According to the Respondent, if the goal was to make a profit from the Complainant’s mark, the website would have targeted advertisements for the Complainant’s competitors or related products and services.
The Respondent further maintains that if the intention was to make a profit from the Complainant’s mark, one would have registered domain names such as <audicar.com>, <audicars.com>, <audiauto.com>, and <audiautos.com>. The Respondent then explains that these domain names are registered to third parties and resolve to webpages with advertisements related to the Complainant’s products, and with for-sale banners at the top of the webpages. The Respondent questions why the Complainant has not filed any complaints against these other domain name owners.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <xaudi.com> is confusingly similar to the AUDI mark, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the AUDI mark is clearly recognizable in the disputed domain name. The inclusion of the preceding letter “x” does not serve to dispel the confusing similarity of the disputed domain name to the distinctive and well-known AUDI mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the AUDI mark. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the AUDI mark, and has uses the disputed domain name with parking pages containing pay-per-click advertising links, while also including a banner at the top of the parking pages offering the disputed domain name for sale.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent claims that he registered the disputed domain name because “xaudi” sounds identical to “saudi” and the Respondent intended to use the disputed domain name to expand the Respondent’s web hosting business in Saudi Arabia and the Middle East. Yet, despite the passage of more than nine years since the acquisition of the disputed domain name, the Respondent has brought forth not even a scintilla of evidence of demonstrable preparations to use the disputed domain name in this manner. Nor has the Respondent substantiated his claim that “xaudi” is pronounced identically to “saudi,” although that would seem easily established by the Respondent if in fact true. Further, WhoIs and IP histories in WhoIs report submitted by the Complainant indicate that the Respondent in all probability was not the initial registrant of the disputed domain name, thus rendering doubtful the Respondent’s claim to have independently invented the word “xaudi.”
The Panel deems the Respondent’s claims as discussed above to be pretextual. When the Respondent registered the disputed domain name on June 24, 2008, the Complainant’s AUDI mark already was a well-known mark in much of the world, including China and Hong Kong. Even assuming the Respondent was the initial registrant of the disputed domain name <xaudi.com>, the Respondent’s claim not to have recognized the distinctive and well-known AUDI mark in the disputed domain name simply is not credible.
After careful review of the attendant facts and circumstances, the Panel finds that the Respondent has not brought forward credible evidence to support a claim of rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy. The Panel concludes that the Respondent was aware of the Complainant’s rights in the AUDI mark when registering the disputed domain name. The Respondent has not been authorized to use the Complainant’s mark, and has not been commonly known by the disputed domain name. The Panel finds that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the Respondent registered the disputed 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) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 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. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel concludes that the Respondent was aware of the Complainant’s AUDI mark when registering the disputed domain name. The Respondent engaged in opportunistic domain name speculation, and the record before this Panel is convincing that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s rights in the distinctive and well-known AUDI mark, for commercial gain.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <xaudi.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 14, 2017
1 Hong Kong is a Special Administrative Region (SAR) of China.
2 Quton Seed Company (Private) Limited v. DNS Administrator, Cykon Technology Limited , WIPO Case No. D2015-1041; Saurikit, LLC v. Cykon Technology Limited, WIPO Case No. D2010-2193; Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776; Zenni Optical, LLC. An Oregon LLC v. DNS Administrator / Cykon Technology Limited, WIPO Case No. D2009-1594; NYSE Group, Inc. v. DNS Administrator / Cykon Technology Limited, FA 1709950 (Nat. Arb. Forum February 25, 2017); Amegy Bank National Association v. Cykon Technology Limited , FA 1386905 (Nat. Arb. Forum June 22, 2011).
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
4 This is not the first time that the Respondent has been found to be in bad faith after registering a domain name appropriating another’s famous or well-known mark. See Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, supra(well-known mark: LURPAK; the disputed domain name: <lurpa.com>); NYSE Group, Inc. v. DNS Administrator / Cykon Technology Limited, supra (well-known mark: NYSE; disputed domain name: <nyses.com>). There are striking similarities in these cases and the instant case that arguably reflect a pattern of conduct by the Respondent. For example, in each of these cases, the disputed domain names differ from the complainant’s trademarks only by the addition or subtraction of a single letter. In each of these cases the Respondent claims to have registered the disputed domain name for use with web hosting activities, but then offers only self-serving statements and no proof. Further, in each of these cases the disputed domain names resolve to parking pages with advertising links unrelated to the complainant’s goods or services, with the Respondent arguing that it would have targeted the complainant’s goods and services were it acting in bad faith. That argument has been rejected by the panels in each of these cases.