WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Group of America, Inc. v. Moniker Privacy Services / Mainstream Advertising, Nathan Joseph
Case No. D2014-0528
1. The Parties
Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America (the “USA”), represented by Phillips Ryther & Winchester, USA.
Respondent is Moniker Privacy Services of Portland, Oregon, USA/ Mainstream Advertising, Nathan Joseph of Woodland Hills, California, USA.
2. The Domain Name and Registrar
The disputed domain name <audidealers.com> is registered with Moniker Online Services, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2014, 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 to Complainant on April 14, 2014 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 April 15, 2014.
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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 9, 2014.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 16, 2014. 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
Audi of America is a division within Complainant, Volkswagen Group of America, Inc. Audi was founded in 1914 and is one of the world’s leading automakers. Audi develops, manufactures, and distributes a wide variety of products, most notably, its AUDI brand automobiles.
Complainant owns U.S. registration No. 0,708,352 for AUDI, registered on December 13, 1960 in addition to numerous other AUDI trademark registrations in the United States and in Europe.
The disputed domain name was registered on June 10, 1997.
5. Parties’ Contentions
Complainant alleges that it has trademark rights in the AUDI marks as evidenced by the above listed registrations; that the Audi Marks have become well known and famous; that the Audi Marks are confusingly similar to the disputed domain name; and that the descriptive term “dealers” does not distinguish the disputed domain name from Complainant. Rather, it adds to the confusion by leading Internet users to believe that Complainant operates the website associated with the disputed domain name.
Complainant states 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 trademark, has no connection or affiliation with Complainant, and has never made any bona fide use of the disputed domain name. Specifically, Respondent uses the disputed domain name to direct Internet traffic to a click-through website that advertises “Ford Dealerships” and “Ford” related products.
Regarding registration and use in bad faith, Complainant states that it was bad faith for the Respondent to have registered the disputed domain name given the strength and fame of the AUDI Marks and the AUDI registrations worldwide. The fact that Respondent combined “dealers” with AUDI shows that Respondent knew that Complainant was a manufacturer that sells its products through a network of dealers. Respondent’s use of the disputed domain name to display so-called “pay-per-click” or “click-through” advertising for competing products is a well-recognized form of cyberpiracy. Respondent’s use of a proxy service coupled with Respondent’s failure to respond to Audi’s demand letter suggests an attempt to evade accountability and is further evidence of bad faith use.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the AUDI mark and that the disputed domain name is confusingly similar to it because it incorporates the entire AUDI trademark with the addition of only the descriptive term “dealers”. The Panel finds that Complainant satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141.
The evidence of record supports Complainant’s unrebutted allegations and, accordingly, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent did not contest Complainant’s allegations of bad faith registration and use. Also, it is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on June 10, 1997, since Complainant had trademark registrations in the AUDI mark and was using the AUDI mark more than 35 years prior to the disputed domain name registration.
The evidence shows that the Respondent’s website provided links to Ford’s website and to Ford dealerships. Under the Policy, it is evidence of bad faith that, “by using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
For the reasons set forth above, the Panel finds that Respondent registered and used 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 <audidealers.com> be transferred to the Complainant.
Lawrence K. Nodine
Date: May 30, 2014