WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. Mohamed Maan
Case No. D2015-0756
1. The Parties
The Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Mohamed Maan of Enschede, The Netherlands, self-represented.
2. The Domain Name and Registrar
The disputed domain name <audi.press> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2015. On April 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2015, 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.
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 the Respondent of the Complaint, and the proceedings commenced on May 4, 2015. On May 5, 2015, the Center received an unsolicited “amendment to the Complaint” from the Complainant by email and on the same day, the Center received the Respondent’s filing in reply of the Complainant’s unsolicited “amendment to the Complaint”.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2015. The Response was filed with the Center on May 24, 2015.
The Center appointed Assen Alexiev as the sole panelist in this matter on June 9, 2015. 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
Complainant is one of the biggest car manufacturers in the world and produces its cars globally, including in Germany, India and China. In 2014, it made worldwide deliveries of approximately 1,741,127 Audi cars.
The Complainant is the holder of a number of international trademark registrations for AUDI, including the following (the “AUDI trademark”):
- The word trademark AUDI with registration No. 000018812, registered as a Community trademark on May 26, 1998 for goods and services in International Classes 9, 12, 14, 16, 18, 20, 25, 27, 28 and 37;
- The word trademark AUDI with registration No.009930751, registered as a Community trademark on February 18, 2012 for goods and services in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 37, 38, 39, 40, 41, 42, 43, 44 and 45; and
- The combined trademark AUDI and device, with registration No. 657259, registered as an International trademark on February 10, 1996 for goods and services in International Classes 2, 7, 8, 9, 12, 14, 16, 18, 20, 21, 25, 26, 27, 28 and 37.
In 2014, Interbrand top global brands ranked the AUDI trademark as 45th among the hundred top global brands and estimated its value at about USD 9,831 million.
The disputed domain name was registered on March 12, 2015.
5. Parties’ Contentions
The Complainant points out that its history as a world famous manufacturer of cars reaches back for decades, and its trademarks belong to the globally best known trademarks, as most Internet users worldwide walk by the cars of the Complainant in their everyday life. The Complainant submits that it promotes its trademarks worldwide with innovative websites, TV spots or as a sponsor of sport clubs and events. The Complainant, its affiliated companies and authorized dealers run various websites under domain names that incorporate the AUDI trademark, such as <audi.de>, <audi.com>, <audi.us>, <audi.cn>, <myaudi.de>, <audi.ch>, <audi.it>, <audi-shop.de> or <audi.nl>.
The Complainant submits that the disputed domain name is identical to the AUDI trademark. Even if the “.press” generic Top Level Domain (“gTLD”) is taken into account when determining similarity, the disputed domain name would still be confusingly similar to a high degree as “press” is merely descriptive and Internet users will expect a website related to Complainant, in particular as the second level domain is identical to the AUDI trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no indication of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The website under the disputed domain name displays a parking page provided by the hosting services provider, and the Respondent is not making any active use of the disputed domain name. According to the Complainant, the Respondent is not commonly known by the name “Audi”, and no permission to use this name was granted by the Complainant to the Respondent.
The Complainant further contends that, having noticed that the Respondent had registered the disputed domain name, the Complainant’s domain name portfolio manager approached the Respondent by email on March 12, 2015 with a request for the transfer of the disputed domain name to the Complainant. In its reply, the Respondent confirmed that it was owner of the disputed domain name and alleged that it was working on a “web showcase project” for an entity called “Arabische Urbane Democratisierende Instelling” (or “AUDI” in short). The Respondent stated that he was “happy to cooperate” and requested an offer of the Complainant. The Respondent again contacted the Complainant’s service provider on March 18, 2015, asking if there was still interest in the disputed domain name. The Complainant then offered the Respondent to reimburse it with EUR 300 for its expenses in connection with the registration and transfer of the disputed domain name. The Respondent refused this offer, stating that it was only willing to give up the disputed domain name if the price would enable it to buy the domain name <araburban.org>, whose owners allegedly demanded a “considerably higher price”. The Respondent concluded that he was “not willing to pay any penny extra to satisfy the wishes of a multi-billion dollar company.” The Complainant then ceased the negotiations and did not contact the Respondent thereafter. Despite this, on March 23, 2015 the Respondent again approached the Complainant’s service provider by email and offered to sell the disputed domain name in return for a 2 year lease of an Audi A7 car. The Complainant did not reply to this email. On March 24, 2015, the Respondent sent another unsolicited email, reducing its demand to an Audi A3 automobile.
The Complainant submits that searches made in major search engines for “Arabische Urbane Democratisierende Instelling” did not provide any results for any such organization, which made it likely that it did not exist and that this allegation of the Respondent was a mere pretext for the registration of the disputed domain name. The use of the acronym “AUDI” by such organization would infringe the Complainant’s trademark and trade name rights.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent must have had actual knowledge about the Complainant’s trademarks when acquiring the disputed domain name. The email messages sent by the Respondent indicated that it had acquired the domain name primarily for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name. According to the Complainant, there is no conceivable legitimate interest for the use of the disputed domain name by the Respondent, and any commercial use would necessarily infringe the AUDI trademark, being registered for all classes in many countries around the world and benefitting from a wide protection due to its strong reputation.
In its supplementary submission, the Complainant contends that after receiving the Complaint, the Respondent again contacted the Complainant on April 27, 2015, and demanded USD 1,500 for the transfer of the disputed domain name, stating that:
“[…] The organization l work for are not looking for the commotion that comes with such legal case, and l know for sure that AUDI AG does not want to appear in a negative way in the press (which you will if you proceed). A WIPO case by a single Panelist would cost you 1500 USD, we are willing to settle for that amount and spare you the troubles and negative press releases that will follow if AUDI AG bashes an Arabic organization that stands for minorities. […]”
The Complainant further submits that on May 4, 2015, the Respondent again contacted the Complainant and announced that it would request a three member panel to decide the dispute if the Complainant did not accept his proposal. According to the Complainant, these messages by the Respondent further documented the Respondent’s bad faith. Threatening the Complainant with negative press in connection with demands exceeding the Respondent’s out-of-pocket-costs evidenced the Respondent’s repeated efforts to monetize the disputed domain name by all means, especially after a legitimate proceeding had been commenced against it.
The Respondent admits that the disputed domain name may cause some confusion in Internet users, but the Respondent was not going to advertise or market the website associated to the disputed domain name to the international community, and so it would not be noticed by anyone except the people who were actually looking to visit the Respondent’s website, and all Internet users that visit this website would not expect anything other but the Respondent’s website.
According to the Respondent, it 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 AUDI trademark. The Respondent’s website is offline, but this is a planned action and is necessary as the organization Arabische Urbane Democratisierende Instelling is “currently being set-up and working on final steps with its finances”. The disputed domain name is going to be used as a press website for a local organization. The Respondent has looked at many other options for a domain name so that there would be no interference at all with the Complainant’s AUDI trademarks, but all short phrased options were already taken.
The Respondent disputes the statements of the Complainant and submits that the latter was making an attempt at reverse domain name hijacking. The Respondent submits that it had no intention of using the disputed domain name in any commercial way and that it will not sell any goods on the associated website or market anything that involves cars. The Respondent alleges that for this reason it would not violate any trademarks, including the AUDI trademark. The Respondent also declares that it would not sell the disputed domain name in the future to any third party “regardless the size of the amount being offered”.
The Respondent admits that it is not known by the name “Audi AG” or associated with the Complainant, but this did not mean that it could not register a domain name that involved the letter combination “AUDI”, because the acronym of the organization “Arabische Urbane Democratisierende Instelling” was A.U.D.I.; many of the future visitors of the associated website were going to be old people with bad vision and movement problems, so typing and memorizing a long domain name such as <ArabischeUrbaneDemocratisierende-Instelling.com> would be difficult for them; the Complainant was indeed well known so all visitors looking for the Complainant’s actual press website would not look for any other press website of the Complainant and would not encounter the Respondent’s future website at the disputed domain name; and lastly, if the Complainant was really interested in the disputed domain name, it could have registered it in the sunrise period.
According to the Respondent, the main reason why there was no website at the disputed domain name because the website was still in development. Developing this website was a hard task as it was aimed at elder people speaking mostly Arabic, which complicated the development because there were translators working on the project who needed time to do their job, and because the architecture of the website was being optimized for elder people. The Respondent submits that it was not trying to set up a nonprofit organization website after the Complaint because the plan to launch such website was made long before the Complaint.
In response to the supplemental submission of the Complainant, the Respondent confirmed that it had sent the communications referred to by the Complainant, and stated that it was “not threatening anybody with negative press releases” but was “just simply pointing out something that is most-likely going to happen”. The Respondent “merely gave the Complainant a heads-up of what may come, and as a nice gesture for them to prepare for the costs that this may bring with it”. The Respondent also submits that it was the Complainant’s service provider who first contacted the Respondent on March 19, 2015 and offered money for the transfer of the disputed domain name, which showed that it was the Complainant that was acting in bad faith. The Respondent declined the offer because the money that was offered was not enough to cover the expenses for the acquisition of another short domain name.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the AUDI trademark. This trademark has been used by the Complainant in many countries for a very long period of time and has become famous.
The Panel notes that a common practice has emerged under the Policy before the advent of the new gTLDs, namely to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.press” part of the disputed domain name. Therefore, the relevant part of the disputed domain name that has to be analyzed is its “audi” section, which is identical to the AUDI trademark.
The Respondent has alleged that Internet users would not be confused, as the Respondent would not advertise the disputed domain name, and it would not be noticed by anyone except the people who were actually looking to visit the Respondent’s website. In this respect, the Panel notes that, as summarized in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, […]. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. […] The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP”. In view of this, the Panel is not convinced by the Respondent’s comments and does not regard them as relevant in relation to the test of identity or confusing similarity. Moreover, as discussed below, the Respondent has provided no details or evidence about the nature and content of the website allegedly planned to be associated with the disputed domain name.
Therefore, the Panel finds that the disputed domain name is identical to the AUDI trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated to the Complainant and has never been authorized to use the name “AUDI”, including as a domain name, that the Respondent is not commonly known by the disputed domain name, is not making a noncommercial or a fair use of it and is not using it in relation to the provision of a bona fide offering of goods or services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has alleged that it plans to use the disputed domain name for a legitimate noncommercial purpose – a press website of the organization called “Arabische Urbane Democratisierende Instelling” whose acronym was “A.U.D.I.”, directed at elderly Arabic speakers. According to the Respondent, the website is still in development. The Respondent has not provided any evidence for the establishment and the existence of such organization or for its goals and plans for their achievement through the alleged website, and no explanation or evidence about the content and the design of the alleged website in development has been adduced. At the same time, there is a contradiction in the allegations of the Respondent, as it states that the planned website was intended to be a “press website” and at the same time alleges that it was intended to be used by elderly people speaking the Arabic language. In this situation, the Panel is not convinced by the explanations of the Respondent. Due to the lack of any evidence about the alleged nonprofit organization and about the alleged website, it appears more likely to the Panel that they do not exist. As contended by the Complainant, the references to such organization and its planned website are likely to have been used by the Respondent simply as a pretext to explain its actions, which more likely were made with other motives that have not been disclosed by the Respondent and may possibly be illegitimate, and may well include an attempt to extract benefit from the popularity of the AUDI trademark incorporated in the disputed domain name.
It is true that during the Sunrise Period trademark owners had an opportunity to register their marks in the “.press” space before domain names in that space became generally available on a first come, first served basis. This does not mean, however, that upon the expiration of the Sunrise Period non-trademark owners necessarily became entitled to register any available <trademark.press> domain names without regard for the UDRP.
Therefore, the Panel finds that the Respondent’s allegations are not convincing and do not establish any rights or legitimate interests of the Respondent in the disputed domain name. As the Respondent has not put forward any other reasons why it should be regarded as having rights or legitimate interests in the disputed domain name, the Complainant’s prima facie case has remained unrebutted.
Taking into account all the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The AUDI trademark is well-known globally, and the Respondent has not disputed that it knew of the Complainant when it registered the disputed domain name. The disputed domain name is identical to the AUDI trademark, and the Respondent has not provided a credible explanation for its choice of domain name and for the need to register it. There is no evidence in the case file about the existence of the alleged organization “Arabische Urbane Democratisierende Instelling” or even for any attempts for its establishment. The contention of the Complainant that the Respondent has requested in exchange of the disputed domain name a two year lease of a Audi A7 car or even an Audi A3 car has not been disputed by the Respondent.
As discussed in the section on rights or legitimate interests, in the Panel’s view in such circumstances it is more likely than not that the Respondent has registered the disputed domain name not for the purposes of this purported organization, but for other purposes, including an attempt to extract benefit from the popularity of the AUDI trademark incorporated in the disputed domain name. Such a probability is further increased by the conduct of the Respondent following the attempt by the Complainant to obtain the disputed domain name from the Respondent, where the Respondent requested against the transfer of the disputed domain name a valuable consideration that exceeded many times the expenses of the Respondent related to the registration of the disputed domain name.
The actions of the Respondent following the submission of the Complaint, where it has threatened the Complainant with bad publicity if the Complainant did not accept the Respondent’s offer to sell the disputed domain name for USD 1,500 do not speak in the Respondent’s favor either, but further increase the probability discussed above. The Respondent has attempted to downplay its statements, but they are clear to the Panel. Saying that “l know for sure that AUDI AG does not want to appear in a negative way in the press (which you will if you proceed)” is nothing short of a threatening statement and an attempt to extract financial gain from the Complainant through this threatening statement.
The Respondent has not used the disputed domain name, as there is no active website associated to it. However, in view of the fact that the AUDI trademark is registered as a Community trademark for all classes of goods and services and in light of the circumstances of this case, the Panel cannot conceive of a good faith use of the disputed domain name by the Respondent (based in the Netherlands) that would not infringe the trademark rights of the Complainant in this trademark.
In these circumstances, the Panel is satisfied that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, which supports a finding of registration and use of the disputed domain name in bad faith.
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 <audi.press> be transferred to the Complainant.
Date: June 29, 2015