WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG and Volkswagen Group of America, Inc. v. Joey Craig / Domain Admin, PrivacyProtect.org
Case No. D2011-2056
1. The Parties
Complainants are Audi AG and Volkswagen Group of America, Inc. (“Complainant”) of Herndon, Virginia, United States of America, represented by Howard, Phillips & Andersen, United States of America.
Respondent is Joey Craig of Southampton, Pennsylvania, United States of America / Domain Admin, PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed Domain Name <thompsonaudi.com> is registered with Direct Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2011. On November 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On November 24, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication on November 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 5, 2011.
The Center verified that the Complaint together with the amendment to 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 December 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2011.
The Center appointed John E. Kidd as the sole panelist in this matter on January 18, 2012. 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.
Having reviewed the communication records, the Panel finds that the Center has discharged its responsibilities under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice of Respondent.” In the view of the Panel, the proper procedures have been followed and it may issue its decision based upon the documents submitted in accordance with the Policy, the Rules and Supplemental Rules without the benefit of a response from Respondent.
In light of Respondent’s failure to submit a response, the Panel, pursuant to the Rules may draw such inference, including adverse inferences, as it considers appropriate. See William H. Cosby, Jr. v. Sterling Davenport, WIPO Case No. D2005-0756.
4. Factual Background
The following facts asserted by Complainant have not been challenged or otherwise contested by Respondent. The Panel has carefully reviewed Complainant’s evidence and by Respondent’s default, the evidence is held to be true.
Complainant Audi AG 1 is a world renown premium automobile manufacturer. The core of its company is the Audi car brand and its trademark. For many years, Audi automobiles have won numerous national and international awards and motor-racing successes. Complainant first registered the AUDI as a trademark in the United States in 1960 and is the owner of all rights, title and interest in the mark and subsequent registered marks, hereinafter the AUDI Marks.
Complainant AUDI Marks are equally extensive outside the United States. For example, in the European Union and Australia.
Audi has spent many millions of dollars and has expended significant effort in advertising, promoting, and developing the AUDI Marks throughout the world. As previous tribunals and UDRP panels have recognized, Audi has established immense goodwill in the marks. See, e.g., Audi AG v. D’Amato, 381 F. Supp. 2d 644, 659 (E.D. Mich 2005) (“The court finds that the Audi Trademarks are famous and distinctive trademarks.”); Audi AG v. Gillespie Auto Group, WIPO Case No. D2007-1850 (WIPO February 3, 2008) (transferring <audi-experience.com> and holding, “the Panel is satisfied that the AUDI trademark is well-known internationally, including in the United States.”).
Audi has continuously used the AUDI Marks worldwide in connection with the promotion, advertising, and sale of Audi’s products and services, including automobiles and automobile parts and accessories, since 1925.
In 2010, the Audi brand grew faster than the worldwide auto market overall; increasing sales by 15%. Audi sold 949,729 and 1,092,411 automobiles worldwide in 2009 and 2010, respectively. In 2010, 101,629 Audi automobiles were sold in the United States.
Audi automobiles are sold through a network of licensed Audi dealers, which, pursuant to an Audi policy designed to ensure brand uniformity, are referred to by names comprised of “Audi” combined with the name of the franchise owner, such as, for example, “Strong Audi,” which is a dealership in Salt Lake city, Utah, owned and operated by Blake and Brad Strong, and “Thompson Audi,” which is the name of an Audi dealership located in Waterville, Maine, that opened earlier this year when Thompson Volkswagen, which had been operating under that name for 40 years, expanded its operations to begin selling Audi automobiles. A common form of dealer expansion is the introduction of related auto lines. As Audi is related to Volkswagen and as Thompson Volkswagen had used the domain name <thompsonvw.com> since 2000.
In addition, Audi maintains a network of websites advertising and promoting these dealerships, using Audi domain names reflecting the dealer’s name. So, for example, Strong Audi’s website is located at “www.strongaudi.com”.
5. Parties’ Contentions
Audi discovered Respondent’s registration of the disputed Domain Name on October 11, 2011, when Thompson Audi attempted to register a domain name to operate a website promoting its new dealership. On October 12, 2011, Audi’s counsel sent a demand letter to Respondent via PrivacyProtect.org, notifying Respondent of Audi’s trademark objections to Respondent’s registration and use of the disputed Domain Name.
On November 2, 2011, via an internal email tool incorporated within PrivacyProtect.org’s website, Audi’s counsel sent an email to PrivacyProtect.org asking it to disable the registration protection service associated with the disputed Domain Name to enable Audi to contact the owner directly.
On November 3, 2011, PrivacyProtect.org sent an email to Audi’s counsel acknowledging receipt of Audi’s request and refusing to disable the private registration service.
Complainant has not licensed or otherwise permitted Respondent to use the AUDI Marks. Complainant also has not licensed or otherwise permitted Respondent to apply for or use any Domain Name consisting of or incorporating the AUDI Marks or any mark similar thereto.
Complainant contends that:
1. The disputed Domain Name is confusingly similar to a trademark or service make in which Complainant has rights (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii),(b)(ix)(1));
2. Respondent has no rights or legitimate interests in respect of the disputed Domain Name (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2)); and
3. The disputed Domain Name was registered and is being used in bad faith (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3)).
Respondent did not reply or otherwise object to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed Domain Name <thompsonaudi.com> incorporates Complainant’s famous AUDI Marks precisely, adding only the common surname “Thompson” as a qualifier. The Panel also finds that the disputed Domain Name is functionally identical to AUDI inasmuch as addition of a common surname such as Thompson to a famous trademark does not distinguish the disputed Domain Name from the famous trademark holder when, as here, Complainant has a history of allowing authorized users to combine its marks with their surnames in that fashion. As a prior panel explained in finding <roebuckchryslerjeep.com> confusingly similar to Complainant’s CHRYSLER and JEEP trademarks, “[t]he mere addition of a descriptive term to Complainant’s marks does not negate the confusing similarity of Respondent’s Domain Names pursuant to Policy 4(a) (i) (especially where Complainant has a history of allowing authorized users of its trademarks to use names with such descriptions attached).” DaimlerChrysler Corp. v. credoNIC.com, NAF No. 284954 (NAF August 5, 2004) (transferring <roebuckchryslerjeep.com>). The convention of forming a dealership name and Domain Name by adding the dealership owner’s surname to the automobile brand is well-established among automobile manufacturers and their licensees. See, e.g., Byers Chevrolet, LLC v. Van Ness, NAF No. 114670 (NAF July 30, 2002) (transferring <byerschevrolet.com>); Keffer Dodge, Inc. v. Modern Limited-Cayman Web Dev., NAF No. 311382 (NAF September 20, 2004) (transferring <kefferdodge.com>).
In light of the above, the Panel concludes that the disputed Domain Name is confusingly similar to the prior registered Audi Marks in which Complainant has rights and the requirements of paragraph 4(a)(i) of the Policy has been established and satisfied by Complainant.
B. Rights or Legitimate Interests:
The Panel finds that Respondent has no rights or legitimate interests in the disputed Domain Name because Respondent is not known by the disputed Domain Name, has not been authorized by Complainant to use the AUDI Marks in any connection, and has never made any bona fide use of <thompsonaudi.com>.
The disputed Domain Name was registered on May 17, 2009, – long after AUDI had attained worldwide fame and long after AUDI had established a significant Internet presence.
The Panel finds Respondent has never responded to Audi’s demand letter and has continually used the disputed Domain Name to host a commercial website advertising automobiles and related goods and services for sales in direct competition with Audi and its licensed dealers.
In the Panel’s opinion, such use is an infringing use, illegitimate and prevents Respondent from claiming any rights or legitimate interests in the disputed Domain Name under Policy, paragraph 4(a)(ii). “An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent (the Policy 4(a)).” The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346 (WIPO June 12, 2000); see also AutoNation, Inc. v. Schaefer, WIPO Case No. D2001-0289 (WIPO April 24, 2001) (“Because Mr. Schaefer’s use of the Domain Name <auto-nation-direct.com> is an infringing use of AutoNation’s service marks, Mr. Schaefer cannot have established any legitimate right or interest in this Domain Name.”)
Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed Domain Name.
C. Registered and Used in Bad Faith.
In the Panel’s opinion, many factors demonstrate Respondent’ bad faith. Given the strength and fame of the AUDI Marks, the Panel is of the opinion that Respondent’s bad faith is established by the fact of registration alone. The AUDI mark falls within a select class of internationally strong marks that have become so famous that it is impossible for any Respondent to claim that it was unaware of Complainant’s prior rights or has a legitimate interest in the disputed Domain Names that incorporate the AUDI mark. See, e. g., Playboy Enters. Inter’l, Inc. v. Pitts, WIPO Case No. D2006-0675 (WIPO August 3, 2006). (“The Panel agrees with the Complainant that the Respondent’s registration of a Domain Name incorporating a very famous mark of which she was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith.”); Audi AG v. Gillespie Auto Group, supra (“Given the well-known status of the AUDI trademark, the Panel finds registration to be in bad faith.”); Audi AG v. Sikes Info. Systems, WIPO Case No. D2009-0128 (WIPO March 23, 2009) (transferring <audiponline.com> and <audis-online.com> and finding bad faith based on finding, among others, 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.”); see also Ford Motor Co. v. Knuhtsen, WIPO Case No. DBIZ2002-00183 (WIPO July 15, 2002) (transferring <landrover.biz> and holding “Respondent registered the disputed Domain Name in bad faith because the Complainant Trademark is in a select class of internationally strong marks that make it virtually certain Respondent knew that his Domain Name registration infringed Complainant’s mark”).
The Panel concludes that Respondent’s use of the disputed Domain Name to host a website offering automobiles and related goods and services for sale in direct competition with Complainant and its licensed dealers further conclusively demonstrates Respondent’s bad faith. Use of the disputed Domain Name that is confusingly similar to Complainant’s mark to host a website offering competing goods and services for sale is classic cyberpiracy and constitutes “compelling evidence of bad faith in the registration and use of the disputed Domain Name” pursuant to Policy, paragraph 4(b)(iv). The Chase Manhattan Corp. v. Whitely, WIPO Case No. D2000-0346 (WIPO June 12, 2000); See also Volkswagen AG v. MapleOne Solutions, WIPO Case No. D2003-0326 (WIPO June 16, 2003) (“First, the Complainant’s mark is well known and the Respondent knew that VW referred to the Complainant by incorporating on its website a statement about purchasing a Mercedes rather than a Volkswagen. This is indicative of bad faith registration.”)
Indeed, the Panel in Volkswagen AG v. MapleOne Solutions, supra. inferred the registrant was aware of the complainant and hence acting in bad faith when, as here, the Registrant registered the disputed Domain Name that had exactly the same structure as the domain names used by the complainant’s dealers. Id. (“With respect to paragraph 4(b)(iii), the Panel refers to [the] practice of several other dealerships to set up (licensed) websites using the structure “www.nameofcityvw.com”, which the Respondent appropriated. At the very least, the panel finds it hard to believe that the fact that the Respondent chose precisely the same structure for the Domain Name is a mere coincidence.”).
The Panel finds that the use of the disputed Domain Name to offer competing goods and services for sale also constitutes evidence of business disruption pursuant to Policy, paragraph 4(b)(iii). See Global Esprit Inc. v. Living 4, WIPO Case No. D2004-0318 (WIPO August 24, 2004) (finding respondent’s use of domain name confusingly similar to complainant’s mark to operate website purveying competing goods constitutes evidence of bad faith pursuant to Policy, paragraphs. 4(b)(iii) and 4(b)(iv)).
The Panel finds that bad faith is further demonstrated by Respondent’s efforts to conceal his or her true identity by registering the disputed Domain Name in the name of a proxy service and refusing to respond to Audi’s demand letter. Efforts by Respondent to distance himself or herself from an illegitimate use constitute further evidence of bad faith, as does the provision of false or inaccurate contact information. See Sud-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 (WIPO July 3, 2000) (finding bad faith registration and use when complainant “was unsuccessful in its attempts to contact Respondent by using the contact details in the Registrar’s registry”); Audi AG v. Sandlo LLC, WIPO Case No. D2008-1053 (WIPO September 3, 2008) (transferring <auditulsa.com> and <tulsaaudi.com> and including among facts indicating bad faith “Respondent’s failure to respond to Complainant’s cease and desist letters”).
In the present case, the Panel holds that any of these circumstances, whether alone or in combination, is sufficient to justify a finding that Respondent has acted in bad faith. See Playboy Enters. Inter’l, Inc. v. Domain Active Pty. Ltd., WIPO Case No. D2002-1156 (WIPO February. 13, 2003) (holding “so far as element (iii) is concerned it is sufficient that the Complaint demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the Policy applies”).
For all of 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 <thompsonaudi.com> be transferred to the Complaint.
John E. Kidd
Dated: January 27, 2012
1 Audi AG is the current name of the corporation formerly known as Auto Union G.m.b.H.