WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen Group of America, Inc. v. Plamen Nanev

Case No. D2015-1138

1. The Parties

Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America, represented by Phillips Ryther & Winchester, United States.

Respondent is Plamen Nanev of Saint Petersburg, Florida, United States.

2. The Domain Names and Registrar

The disputed domain names, <audipalmbeach.com> and <audiwestpalmbeach.com> are registered with GoDaddy.com, LLC (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 6, 2015, the Registrar transmitted by email to the Center its response verifying that Respondent is listed as the registrant and providing the contact information and other details of the registrations.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 July 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2015.

The Center appointed Debra J. Stanek as the sole panelist in this matter on August 26, 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’s affiliate, Audi AG, is a German corporation that owns a United States federal trademark registration for the mark AUDI for automobiles, which issued in 1960. The mark is well-known worldwide for automobiles and automobile accessories, among other things.

The disputed domain names were registered on September 27, 2013. Neither appears to be in active use currently; recent screen shots show webpages that display the message: “Website Coming Soon!” In May 2015, Complainant contacted Respondent objecting to use of the <audiwestpalmbeach.com> domain name. Respondent’s counsel denied that the domain name was infringing. In a subsequent letter, Respondent offered to sell the domain name for USD 50,000.

5. Parties’ Contentions

A. Complainant

1. Identical or Confusingly Similar

Complainant’s affiliate, Audi AG, is a leading automaker worldwide. It obtained its first United States federal trademark registration for AUDI for automobiles in 1960 and claims ownership of numerous other registrations throughout the world. Over the years, Audi AG has established considerable good will in the AUDI marks, which are both famous and distinctive.

Complainant is an exclusive importer of AUDI vehicles and has the right to protect and enforce the AUDI trademarks in the United States.

The disputed domain names are confusingly similar and “functionally identical” to the AUDI marks. Each consists of the term “audi” followed by a geographic term, “west palm beach” or “palm beach.”

For purposes of these proceedings, the geographic term should not be considered and each domain name should be viewed as consisting of only the AUDI mark — that is how readers will understand each domain name. The convention of well-known businesses using geographical references in domain names to target consumers in particular locations is well-established among automobile manufacturers and with Audi dealers in particular. For example, “Audi of Arlington” is the trade name of an authorized Audi dealership located in Arlington, Virginia, which uses the domain name <audiarlington.com> for its commercial website.

2. Rights or Legitimate Interests

Respondent has no legitimate rights in the disputed domain names.

Respondent is not and cannot claim to be known by the domain names. Complainant has found no evidence of any individual or entity using a name that corresponds to either of the domain names. In any case, such a use in connection with a commercial enterprise would infringe and dilute the AUDI mark and, thus, could not give rise to a legitimate right or interest.

Respondent has not been authorized to use the AUDI marks in any way, has no connection or affiliation with Complainant or its affiliates, and has never made any bona fide use of nor any demonstrable preparations to use the disputed domain names. The only entity authorized to use the domain names is the Audi dealership located in West Palm Beach, Florida.

Respondent cannot establish use of the domain names for a legitimate noncommercial purpose or fair use prior to receipt of Audi’s May 2015 demand letter. Prior to the mentioned letter, the only use that Respondent had made of <audiwestpalmbeach.com> was to direct traffic to a parked webpage that simply stated “Website Coming Soon!” Use of a domain name to host a parked website is not legitimate.

3. Registered and Used in Bad Faith

Many factors demonstrate Respondent’s bad faith.

Given the fame of the AUDI mark, it is impossible for any respondent to claim no knowledge of the mark. The numerous registrations of the AUDI mark, in the United States and elsewhere give Respondent constructive notice of Complainant’s rights.

Respondent’s demand of USD 50,000.00 to transfer one of the domain names, <audiwestpalmbeach.com>, further evidences bad faith. In response to Complainant’s demand letter, Respondent’s counsel initially responded that the <audiwestpalmbeach.com> domain name was not infringing. During a subsequent telephone conversation and a later letter, Respondent’s counsel sought USD 50,000 in return for transferring the domain name. The amount is well in excess of Respondent’s out-of-pocket expenses for registering the domain name and is strong evidence that Respondent registered the domain names primarily for the purpose of selling them at the excessive cost.

Despite the fact that neither of the domain names appears to have been used, bad faith should be presumed when, as here, Complainant’s mark is extremely well-known and famous such that it is impossible to conceive of any plausible active use that would not be illegitimate. Further, Respondent’s registrations have prevented registration of the domain names by the Audi dealership located in West Palm Beach.

The circumstances presented here, taken alone or in combination, justify a finding of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail, a complainant must prove, as to each disputed domain name, that:

(i) It is identical or confusingly similar to a mark in which the complainant has rights.

(ii) The respondent has no rights or legitimate interests in respect to it.

(iii) It has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).

A. Identical or Confusingly Similar

The Panel, consistent with the consensus view, finds that a company related to the registered holder of a trademark may be considered to have rights in a trademark under the UDRP. Section 1.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). As noted in the pertinent discussion in the WIPO Overview 2.0, relevant evidence is desirable¹ . Nonetheless, the Panel is satisfied that Complainant has the authority to bring this complaint based on the registration held by its affiliate.

The disputed domain names are not identical to Complainant’s mark. Therefore Complainant must establish that each is confusingly similar to Complainant’s mark, determined with reference to the degree of resemblance between the domain name and mark at issue as to appearance, sound, and meaning. Here, each begins with the AUDI mark, followed by what the Panel finds to be clear geographic references – “Palm Beach” and “West Palm Beach.”

As a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark² . The Panel finds that Complainant has established that each domain name is confusingly similar to the AUDI mark. The term “audi” appears to be the dominant portion, followed by the geographically descriptive words. The addition of the geographic identifier (ignoring the lack of spaces and the addition of the generic top-level domain “.com”, which are not relevant for these purposes) does not sufficiently differentiate or distinguish the domain names from Complainant’s mark.

The Panel finds that each domain name is confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).

Paragraph 4(c) of the Policy sets out the following examples:

(i) before any notice to you of the dispute, your use of, or demonstrable 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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.

The Panel finds that Complainant has made a prima facie showing as to the examples set out in the Policy. There is no reason to believe, from the WHOIS record or otherwise, that Respondent is or could be known by the disputed domain name.³ Given the fame of the AUDI mark, there is little reason to believe that Respondent could be using, or intending to use, any of the domain names in connection with a bona fide offering of any kind.

By virtue of its default, Respondent has not rebutted Complainant’s prima facie showing.

The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in each domain name.

C. Registered and Used in Bad Faith

A complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).

(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).

Respondent registered more than one domain name incorporating Complainant AUDI mark. The Panel concludes that Respondent registered them to prevent Complainant or its affiliates from reflecting the mark in a domain name.

Further, Complainants’ rights in the mark long predate Respondent’s registration of the disputed domain names. The Panel believes that it is most likely that Respondent was aware of the AUDI mark at the time the domain names were registered. Under these circumstances, the offer to sell one of the domain names for $50,000 also suggests bad faith registration and use.

Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent registered and is using each of the domain names in bad faith.

7. Decision

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 names, <audipalmbeach.com> and <audiwestpalmbeach.com>, be transferred to Complainant.

Debra J. Stanek
Sole Panelist
Date: September 9, 2015

¹ Complainant’s citation to a previous UDRP decision that found Complainant had such authority is not helpful as the decision does not mention the evidence that supported the finding.

² Although such a finding is not automatic, no contrary argument has been made.

³ While “Audi” might function as a surname, there no evidence that actually is functioning that way here.