WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allgemeiner Deutscher Automobil-Club e.V. (ADAC) v. Frank Unger
Case No. D2014-1347
1. The Parties
Complainant is Allgemeiner Deutscher Automobil-Club e.V. (ADAC) of Munich, Germany, represented by Boehmert & Boehmert, Germany.
Respondent is Frank Unger of Green Point, Western Cape, South Africa.
2. The Domain Name and Registrar
The disputed domain name <adac.club> (the "Domain Name") is registered with Go China Domains, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2014. On August 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on August 8, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceeding commenced on August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 5, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 10, 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. Due to exceptional circumstances, it has been necessary for the Panel to extend the decision due date.
4. Factual Background
Complainant, commonly known as "ADAC," is the largest automobile club in Europe. With more than 18 million current members, Complainant is the second largest automobile club in the world. Although founded in 1903 as Deutsche Motorradfahrer-Vereinigung, Complainant has been known by its current name since 1911. In addition to emergency roadside assistance, Complainant provides a range of services including travel planning, insurance, financing, car rental and print/online-information about travelling and automobiles. Complainant's magazine, ADAC Motorwelt, is Germany's most widely distributed magazine with approximately 18 million readers. Additionally, Complainant is engaged in several international motorsport events, such as the ADAC GT Masters and the ADAC Formel Masters.
The Complainant owns numerous ADAC trademarks including the following registrations:
- German Trademark registration DE39826729, registered on October 23, 1998;
- European Community Trade Mark ("CTM") No. 9607029, registered on June 23, 2011; and
- International Registration IR00715737, registered on October 23, 1998, designating, inter alia, Albania, Austria, Bulgaria, Benelux countries, China, Switzerland, Cuba, Czech Republic, Denmark, Finland, France, United Kingdom of Great Britain and Northern Ireland, Croatia, Hungary, Norway, Poland, Russia, Sweden, and Ukraine.
The Domain Name was registered by Respondent on May 7, 2014.
5. Parties' Contentions
Complainant states that Respondent is not in any way connected with or known to Complainant. Respondent's business allegedly focusses on registering, marketing and selling domain names. According to a reverse WhoIs database search, Respondent owns 605 domain names registered in the generic Top- Level Domain (gTLD), ".club." This new gTLD is promoted by its registry as the "the ideal domain extension for clubs and membership organizations" and was launched in early May 2014 in the course of ICANN's expansion of the domain name system.
Complainant states that in addition to the Domain Name's clear reference to Complainant, Respondent has also registered famous brand names, personal names, and trademarks on the opening of the ".club" gTLD, including:
<coop.club> (a supermarket chain operating in various European countries); <crocs.club> (Crocs, Inc. is a shoemaker best known for its foam clogs); <docmorris.club> (DocMorris is a market-leading online pharmacy in Germany); <drivenow.club> (DriveNOW is a joint venture between BMW and Sixt that provides car sharing services in several cities in Europe); <grammy.club> (a Grammy Award is an accolade by the National Academy of Recording Arts and Sciences (NARAS) to recognize outstanding achievement in the music industry); <harrypotter.club> (HARRY POTTER is a registered trademark); <heinz.club> (Heinz Ketchup); <hertz.club> (Hertz is a multi-national car rental company); <kellogs.club> (Kellogs is an American multinational food manufacturing company); <nelson-mandela.club> (no need to explain this); <nimm2.club> (Nimm2 is a sweets brand); <pringles.club> (a brand of potato snack chips owned by the Kellogg Company); <ravensburger.club> (Ravensburger is a German-based market leader for card board games and for jigsaw puzzles); <ravensburgerspiele.club> (see above); <rewe.club> (REWE is a German supermarket chain); <ronaldmcdonald.club> (Ronald McDonald is the famous clown character used as the primary mascot of the McDonald's fast-food restaurant chain); <sixt.club> (Sixt is a market-leading car rental company in Europe); <tupperware.club> (Tupperware, the famous producers of storage products for the kitchen and home); <victoriassecret.club> (Victoria's Secret is the largest American retailer of lingerie); <warrenbuffet.club> (Warren Buffett, widely considered as the most successful investor of the twentieth century).
Complainant indicates that the website linked to the Domain Name currently displays a parking website, which automatically generates "Sponsored Listings" with links to third-party websites. This is a pay-per-click arrangement, which is an Internet advertising model where the domain name owner is paid whenever the Sponsored Listing to a website is clicked. Many of the Domain Name site's listings refer to websites offering used automobiles, travel services, travel insurance services, travel health insurance, and vehicle repair services. Whenever a visitor to the <adac.club> website clicks on any of these listings, Respondent receives advertising revenue.
(i) Identical or confusingly similar
As noted above, Complainant owns a number of registered trademarks for ADAC, one of them German Trademark No. DE39826729, registered on October 23, 1998. Complainant contends that it cannot be questioned that the Domain Name is identical to its trademark registrations. Given the reputation and renown of Complainant's trademarks, it is likely that the majority of Internet users who see the Domain Name will immediately recognize the ADAC trademark, and assume the Domain Name is owned, endorsed or controlled by Complainant or affiliated with Complainant's trademarks. This is also backed by fact that Complainant is an automobile club and membership organization. Thus, Internet users will regard the gTLD ".club" in combination with ADAC as a further reference to Complainant.
(ii) Rights or legitimate interests
Complainant states that Respondent registered the Domain Name in May 2014, well after the various ADAC trademarks had been filed. No relationship between Complainant and Respondent exists that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Name. Since Respondent has not published any (real) content on the website linked to the Domain Name, Respondent, at least prima facie, does not have any rights or legitimate interests in the Domain Name.
(iii) Registered and is used in bad faith
Complainant asserts that Respondent has registered and used the Domain Namein bad faith, as the circumstances indicate that Respondent registered and uses the Domain Name: (i) primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark; and/or (ii) to intentionally attempt to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.
At the time of the Domain Name's registration on May 7, 2014, Complainant had already been established for more than 90 years and had developed an international reputation. The German trademark for ADAC had already been filed on October 23, 1998. Respondent was also notified and warned about Complainant's ADAC trademark: Complainant has submitted evidence to show that registered its ADAC CTM registration with the ICANN Trademark Clearinghouse ("TMCH") on August 27, 2013. Complainant explains that as a result of the TMCH registration and the so-called "Claims Service", any registrant, including Respondent, receives a warning notice when attempting to register a domain name that matches a trademark term in the TMCH. Thus, it cannot be disputed that Respondent was aware of Complainant and its trademarks. Irrespective of Respondent's actual awareness of Complainant's name and mark, the Policy, in paragraph 2 imposes an obligation on Respondent to determine whether the registration infringes any third-party rights:
"It is your [the registrant's] responsibility to determine whether your domain name registration infringes or violates someone else's rights."
Accordingly, panels have repeatedly confirmed that a domain name is registered in bad faith if the registrant willfully closes his eyes to interfering with third-party rights.
Finally, an Internet search would have revealed the existence of Complainant and its ADAC trademark. Complainant provides evidence that using a Google search, all of the first 100 entries relate to the ADAC trademark and Complainant. Additionally, Complainant owns and operates other domain names embodying the ADAC mark, including but not limited to: <adac.de>, <adac.net>, <adac.asia>, <adac.eu>, <adac.info>, and <adac.mobi>. Thus, at the time of registration of the Domain Name, Respondent could have easily identified Complainant and its ADAC mark.
Complainant contends that Respondent also uses the Domain Namein bad faith according to paragraph 4(b)(i) and (iv) of the Policy. Respondent uses the Domain Name primarily for the purpose of selling it to Complainant or one of its competitors, meanwhile making profit by misleading Internet users who actually look for Complainant's services. Respondent has no legitimate interest in holding the Domain Name. Rather, Respondent uses the Domain Names with the aim of taking advantage of existing rights in the ADAC mark, namely, by attracting Internet users to Respondent's website in order to generate pay-per-click advertising revenues.
Accordingly, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the endorsement of his website and of services on his website. This constitutes evidence of both bad faith registration and bad faith use under the Policy, paragraph 4(b)(iv).
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns a number of trademark registrations for its ADAC mark, which has been used by Complainant in commerce for over 90 years and registered as a mark since 1998. The Domain Name is identical to Complainant's ADAC mark, except for the ".club" top-level suffix. The applicable top-level suffix in a domain name (e.g., ".club") is usually to be disregarded under the confusing similarity test, as it is a technical requirement of registration. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
Accordingly, the Panel concludes that the Domain Name is identical to Complainant's ADAC trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. Complainant did not authorize Respondent to use the ADAC mark in the Domain Name. Moreover, there is no evidence that Respondent has been commonly known by the Domain Name or that Respondent has acquired any trademark rights in the name.
There is evidence that Respondent has targeted and registered as domain names the trademarks of many parties, including Complainant's ADAC mark. Further, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, but instead is using it to divert consumers from Complainant's website to Respondent's site where Sponsored Listings advertise websites and services that compete with Complainant. In response to these points, Respondent has failed to submit a Response to explain its registration of the Domain Name.
On this showing, there is no indication that Respondent has acquired any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith.
In this case, the Panel is of the view that Respondent was likely targeting Complainant's ADAC mark when it registered the Domain Name. Complainant's ADAC mark is distinctive and the Domain Name is identical to it. Respondent has not responded in this case to provide any plausible reason for why it registered the Domain Name. Furthermore, under the Policy, paragraph 2, Respondent represented and warranted that "to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and "[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Complainant has provided evidence that it registered its ADAC mark with ICANN's TMCH on August 27, 2013, before the Domain Name was registered in May 2014. Moreover, Complainant has submitted evidence to show that Respondent targeted and registered as domain names the trademarks of many other third-parties.
The Panel also determines, on the balance of the evidence, that Respondent is using the Domain Name for the bad faith purpose of using it to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's ADAC mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on its website. Policy, paragraph 4(b)(iv). The Domain Name has been linked to a parking site as described above and used for no other valid purpose.
The Panel therefore concludes that Respondent registered and is using the Domain Name in bad faith. Accordingly, the Panel finds that Complainant has satisfied the third element 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 Domain Name, <adac.club>, be transferred to Complainant.
Christopher S. Gibson
Date: October 6, 2014