WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. Mu Shichun
Case No. D2016-1925
1. The Parties
The Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Resapondent is Mu Shichun of Shangqiu, Henan, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <iaudi.com> (the “Domain Name”) is registered with EJEE Group Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2016. On September 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 28, 2016, 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. On October 3, 2016, the Center transmitted to the Parties an email in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 5, 2016. The Respondent requested that Chinese be the language of the proceeding on October 8, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Parties the commencement of panel appointment process on October 31, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on November 4, 2016. 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
The Complainant is one of the biggest car manufacturers in the world. Its cars are sold under the trade mark AUDI. The worldwide delivery of Audi cars reached approximately 1,741,127 cars in 2014.
The AUDI trade mark (the “Trade Mark”) is registered worldwide including China. The earliest trade mark registration submitted in evidence dates back to 1960 (United States Registration No. 708352). Audi cars are very popular in China and have been increasing every year since 2007. The Complainant promotes the Trade Mark through its various websites. It has a portfolio of domain names that incorporate the Trade Mark including: <audi.de>, <audi.com>, <audi.us>, <audi.cn>, <myaudi.de>, <audi.ch>, <audi.it>, <audi-shop.de> and <audi.nl>.
According to the WhoIs information, the Domain Name was created on November 25, 2009. The Domain Name was connected to a domain name sales website called “www.sharknames.com”. The Domain Name was offered for sale for USD 4,250. At the time of the decision, the sales website has ceased offering the Domain Name for sale and the Domain Name no longer resolves to any active site.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions save for an email of October 8, 2016 requesting that Chinese be the language of the proceeding.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in the Complaint that the language of the proceeding be English. The Complainant is a company registered and located in Europe and has no familiarity with the Chinese language. To proceed in Chinese, the Complainant would have to retain specialised translation services at a disproportionately high cost which would impose a burden on the Complainant. The Domain Name was registered in Latin characters whilst the content on the website connected to the Domain Name was in English. Further, the Respondent owns other domain names consisting of Latin characters and English words such as <jewellerybuzz.com> and <asiafox.com>.
The Respondent submits in an email to the Center on October 8, 2016 that Chinese should be the language of the proceeding as he does not understand English which is why he chose a Chinese provider.
Nevertheless, although all of the communications from the Center to the Parties were transmitted in both Chinese and English, the Respondent chose not to respond to the Complaint.
That being the case, the Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. It appears that the Respondent has knowledge of the English language. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights in the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant’s trade mark AUDI in its entirety and adds the letter “i” as a prefix. The addition of the letter “i” as a prefix does nothing to dispel any confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Respondent is not commonly known by the name “Audi”. He is not in any way affiliated to the Complainant. No permission or authorisation has been given by the Complainant for him to use the Trade Mark or the Domain Name. Neither is the Respondent making legitimate noncommercial fair use of the Domain Name as he is seeking to sell the Domain Name for USD 4,259. He has failed to demonstrate any legitimate use of the Domain Name, suggesting a lack of rights and legitimate interests in the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Trade Mark was registered long before the Domain Name was registered. Further the Trade Mark is a famous trade mark worldwide as it relates to automobiles, including in China where the Respondent is based. The Complainant asserts that the Respondent is a domainer and has a large portfolio of domain names numbering some 4,800. Under certain circumstances, the respondent has an affirmative obligation to avoid abusive domain name registrations especially when the respondent acquires domain names through a process of automated bulk transfer. It is a respondent’s responsibility to determine whether the domain names infringe or violate some else’s rights and should undertake good-faith efforts to screen the bulk registrations. See WIPO Overview 2.0, paragraph 3.4. Thus, the respondent may be deemed to have knowledge of the incorporated third-party trade marks when registering the domain names in a bulk registration.
Moreover, the Domain Name includes a combination of one letter and the Complainant’s mark – “i” and “audi”. It is clear that the combination making up the second-level portion Domain Name was in reference to the Complainant’s trade mark. Given the fame of the Trade Mark, it would be inconceivable that the Respondent had no knowledge of the Trade Mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
The Domain Name resolved to a website that offered the Domain Name for sale. In this case the sale price was USD 4,250. The sum likely exceeds the out of pocket expenses related to the Domain Name. It appears that for the past six years since the Domain Name has been registered the only use of the Domain Name has been for the purpose of sale. This suggests that the Respondent has registered or 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Name which is evidence of bad faith under paragraph 4b(i).
Considering the circumstances, the Panel considers that the Domain Name was also used in bad faith.
Accordingly, the Complaint has satisfied the third element of paragraph 4(a) 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, <iaudi.com>, be transferred to the Complainant.
Date: November 22, 2016