WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Group of America, Inc. v. Richard Webb
Case No. D2017-1070
1. The Parties
Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America (U.S.), represented by Phillips Ryther & Winchester, U.S.
Respondent is Richard Webb of Leawood, Kansas / Merriam, Kansas / Simpsonville, South Carolina, U.S.
2. The Domain Names and Registrar
The disputed domain names <audimerriam.com>, <audishawneemission.com>, <merriamaudi.com> and <shawneemissionaudi.com> (collectively, the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2017. Also, on June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 3, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 10, 2017. 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 Volkswagen Group of America, Inc. is a subsidiary of Volkswagen AG, a German corporation. Audi AG is a wholly owned subsidiary of Volkswagen AG, and is also a German corporation. Volkswagen of America, Inc. and Audi of America, Inc. are operating units of Complainant. Complainant is the exclusive U.S. importer of cars manufactured by both Volkswagen AG and Audi AG. They have charged Complainant with protecting their trademark rights in the U.S. and have given Complainant the right to sue for violations of their rights in the U.S.1
Audi develops, manufactures, and distributes products including racing cars and consumer-use sport and luxury vehicles, automobile accessories, personal apparel, and household goods. Audi obtained its first U.S. trademark registration for AUDI (U.S. Reg. No. 708,352) on December 13, 1960 (the "AUDI Mark") and has acquired many additional registrations for AUDI and marks that incorporate AUDI since then (e.g., U.S. Reg. No. 4,875,308). Audi has continuously used the Audi Mark to promote, advertise, and sell its products and services for over 50 years. Audi has spent many millions of dollars and has expended significant effort in advertising, promoting, and developing the Audi Mark in the U.S. and throughout the world.
Audi's network of licensed Audi dealerships sells new and certified used Audi automobiles. Audi's licensed dealerships obtain authorization from Audi to use trade names comprised of "Audi" and the city or market area in which the dealership is located. To maintain consistency in branding and marketing, Audi also registers domain names incorporating the AUDI Mark for use by its licensed dealerships as the online address for their commercial websites. For example, Audi Wichita is a licensed AUDI dealership in Wichita, Kansas that uses "audiwichita.com" as the Internet address for its commercial website.
Respondent owns and operates Infiniti of Kansas City, an automobile dealership that sells new Infiniti vehicles in the Shawnee Mission and Merriam, Kansas areas, with its principal place of business located in Merriam, Kansas. Before Respondent registered the Domain Names, Audi began a selection process to award a new Audi dealership franchise that would cover the Shawnee Mission and Merriam, Kansas market areas. In March of 2015, Audi announced that it had selected a small group of finalists to be considered for that new franchise. One of the finalists selected by Audi was Findlay Auto Group ("Findlay"). When Audi informed Findlay that it was a finalist for the new franchise, it also notified Findlay that its proposed dealership location would have to change and it had to notify Audi before the final selection was made. In April of 2015, Findlay conveyed its intention to partner with Respondent, who owned a parcel of land adjacent to his Infiniti dealership that was closer to the concentration of other premium automotive dealerships in the Shawnee Mission and Merriam, Kansas areas. On May 12, 2015, two weeks before Audi announced the award of the new Audi dealership, Respondent registered the Domain Names without authorization or license from Audi to do so.
On May 22, 2015, Audi approved the award of the new Audi dealership franchise covering the Shawnee Mission and Merriam, Kansas areas, to Kuni Auto Group ("Kuni"). In keeping with the naming convention Kuni selected, and Audi approved, the name "Audi Shawnee Mission" for Kuni's new Audi dealership. On October 23, 2015, Kuni notified Audi that two of the Domain Names, <audishawneemission.com> and <shawneemissionaudi.com>, had already been registered and were being held by a proxy service, making them unavailable to Audi.
On February 22, 2016, Audi discovered that the Domain Names <audimerriam.com> and <merriamaudi.com> had been registered on the same date and time as the other Domain Names and they were also being held by a proxy service.
Complainant's counsel sent a letter to the proxy service requesting the contact information for the true registrant of all the Domain Names. Ultimately, on February 29, 2016, Complainant's counsel received Respondent's contact information from the proxy service.
On March 17, 2016, Complainant's counsel sent a demand letter on Complainant's behalf directly to Respondent, requesting transfer of the Domain Names to Audi. On or around March 25, 2016, Respondent's counsel telephoned Complainant's counsel in response asserting that because Respondent had not used the Domain Names he had done nothing wrong and should not be required to transfer them to Audi. The counsel exchanged calls and emails over several months, attempting to discuss Respondent's intent regarding the Domain Names. Ultimately Respondent's counsel stopped responding. So Complainant's counsel contacted Respondent directly after confirming Respondent was no longer represented by counsel.
From February 22, 2017, through February 28, 2017, Complainant and Respondent exchanged telephone calls and several emails regarding Respondent's intentions for the Domain Names. During those communications, Complainant's counsel offered to reimburse Respondent for his out-of-pocket expenses incurred for registering the Domain Names. Respondent rejected the offer because he stated that he registered the Domain Names because he owns a dealership that services and sells used Audi vehicles and that his intention was to use the Domain Names to advertise this fact.
Since registering the Domain Names, Respondent has not used them in any way, other than to direct traffic to a landing page displaying the words "Website Coming Soon! Please check back soon to see if the site is available."
5. Parties' Contentions
The Domain Names are confusingly similar to the AUDI Mark and functionally identical to it. Complainant has used continuously the AUDI Mark in commerce for over fifty years and has acquired incontestable status under U.S. law. Due to extensive and longstanding advertising, promotion, and sale of goods and services under the AUDI Mark it has become well known and famous. Therefore, Complainant has established a prima facie case of its rights in the Mark.
Each of the Domain Names incorporates Audi's Mark precisely, adding only the geographic qualifiers, "ShawneeMission" and "Merriam." In determining whether a domain name comprised of a geographic indicator is confusingly similar to a Complainant's mark, the geographic qualifier should be omitted and the domain name treated as if it consisted of the mark alone because that is the way the domain name will be comprehended or understood by readers.
Respondent has no legitimate rights in the Domain Names because Respondent is not known by them, has not been authorized by Audi to use the AUDI Mark in any way, has no connection or affiliation with Audi, and has neither made a bona fide use of the Domain Names nor engaged in any demonstrable preparations to use them in connection with a bona fide offering of goods or services. Furthermore, before March 18, 2016, the latest date on which Respondent could claim that he was notified of Audi's objections to his registration of the Domain Names, Respondent only used the Domain Names was to host a "Website Coming Soon!" landing page. Such use is not legitimate. Audi has found no evidence of any other person or entity using those names. Respondent's claim that he registered the Domain Names because he owns a dealership that services and sells used Audi vehicles and intends to use the Domain Names to advertise this fact is clearly pretextual. Even assuming, however, that Respondent's claim was credible and that Respondent mustered sufficient evidence demonstrating preparations to use the Domain Names for that purpose, such use would nevertheless be illegitimate, as it would clearly infringe Audi's rights.
Given the strength and fame of the AUDI Mark, Respondent's bad faith is established by the fact of registration alone. It is impossible for any Respondent to claim that he was unaware of Audi's prior rights or has a legitimate interest in domain names that incorporate the mark. The AUDI Mark is registered with the U.S. Patent & Trademark Office and throughout the world, which confers constructive knowledge of Complainant's rights upon Respondent. That Respondent was conscious of the trademark significance of the Domain Names is further evident from the facts and circumstances under which he registered them, just two weeks prior to Audi awarding a license for a new Audi dealership in the same geographic locations indicated in the Domain Names. Respondent was fully informed about and participated in the selection process for the new Audi dealership in the Shawnee Mission and Merriam Kansas areas. Thus, it couldn't argue it did not know about the AUDI Marks or understand the marketing value of them when it registered them.
Even when a domain name has never been used, bad faith is presumed when, as here, the AUDI Mark is extremely well known and it is not possible to conceive of any plausible, actual or contemplative active use of the domain name by registrant that would not be illegitimate, such as by being a passing-off, an infringement of consumer protection legislation, or an infringement of Complainant's rights under trade mark law.
Respondent's assertion that he owns and operates an automobile dealership in Merriam and Shawnee Mission that services and sells Audi vehicles, constitutes strong evidence of bad faith. Not having been awarded the Audi dealership franchise in that marketing area and knowing that the Domain Names mean and refer to that dealership, his statement evinces intent to use them to divert Internet traffic from the new Audi dealership website to his own Infiniti dealership website or to prevent the new Audi dealership from using the Domain Names to direct Internet traffic to its own website. Respondent's right to use AUDI trademarks to advertise that his dealership services and sells used Audi vehicles does not give him the right to register and use domain names that mean and refer to the Audi dealership that will soon be operating in the geographic area referenced in the Domain Names.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) the respondent's domain name is identical or confusingly similar to a trademark 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 respondent's domain name has been registered and is being used in bad faith.
Each of these elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
It is not contested that Complainant holds rights in the AUDI Mark by virtue of its long-standing use of the Mark, as well as its trademark registrations including U.S. Registration Nos. 708,352 and 4,875,308 that issued on December 13, 1960, and December 22, 2015, respectively.
UDRP panels have consistently held that if a domain name "wholly incorporates a complainant's trademark", it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates, WIPO Case No. DCO2015-0001. The Domain Names <audimerriam.com>, <audishawneemission.com>, <merriamaudi.com> and <shawneemissionaudi.com> wholly incorporate the AUDI Mark thus, it is confusingly similar to that Mark.
Adding the geographic terms "merriam" and "shawneemission" do not diminish the confusing similarity with the Domain Names. In fact, it is more likely to enhance the confusion insofar as the public is likely to believe that the geographic terms reflect locations for Complainant's business. Playboy Enterprises. International, Inc. v. Melancia, WIPO Case No. D2006-1106 (finding confusing similarity of <playboyportugal.com>, holding that the addition of a geographical term to a domain name cannot suffice to prevent the respective trademarks from being "functionally" identical). Furthermore, the convention of combining a geographic term with the trademark of a car manufacturer in a domain name to promote car dealerships is generally well-established among automobile manufacturers. See, e.g., Audi AG v. Sandlot LLC, WIPO Case No. D2008-1053 (finding confusing similarity and ultimately transferring <auditulsa.com> and <tulsaaudi.com>).
Lastly, the Top-Level portion of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no legitimate rights in the Domain Names because: (1) Respondent is not known by the Domain Names; (2) Complainant has not authorized Respondent to use the AUDI Mark in any way; (3) Respondent does not have any connection or affiliation with Audi; (4) Respondent has not made a bona fide use of the Domain Names nor engaged in any demonstrable preparations to use them in connection with a bona fide offering of goods or services. Respondent's representation that he intends to use the Domain Names because he owns a dealership that services and sells used Audi vehicles would amount to an illegitimate use of the Domain Names.
Complainant's facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant's favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on the uncontroverted evidence, the Panel concludes that Respondent registered the Domain Names in bad faith. Respondent registered four Domain Names that are confusingly similar to the AUDI Mark without having any cognizable rights or legitimate interests under the Policy to do so. Furthermore, Complainant established rights in the Mark and obtained U.S. trademark registrations long before Respondent registered the Domain Names. Those reasons would be sufficient for the Panel to find that Respondent was aware of Complainant's rights in the AUDI Mark when it registered the Domain Names. Here however, Respondent has represented that it "own[s] and operate[s] an automobile dealership in Merriam and Shawnee Mission that services and sells Audi vehicles." So it is clear that Respondent knew of Complainant and the AUDI Mark when it registered the Domain Names, and proceeded to do so, without authorization, knowing that Audi was in the process of accrediting a new dealership in Respondent's location. Furthermore, as the owner of an automobile dealership, Respondent would have known the generally, well-established convention of combining a geographic term with the trademark of a car manufacturer in a domain name to promote car dealerships. The Domain Names follow that convention using the AUDI Mark.
The Panel also finds Respondent has been using the Domain Names in bad faith despite the fact that the Domain Names do not currently resolve to an active website. The evidence here shows that Complainant had a long-standing reputation in the automobile industry using the AUDI Mark when Respondent registered the Domain Names. Many prior UDRP panels have accepted that a reseller may in fact make a bona fide use of a domain name comprising the trademark of another. However, in the present case, since registering the Domain Names Respondent has not actively used them in connection with any car dealership websites or otherwise and currently Respondent is not using the Domain Names in conjunction with a commercial website (other than to direct traffic to a landing page displaying the words "Website Coming Soon! Please check back soon to see if the site is available"). Holding the Domain Names at issue, however, essentially disrupts the business of a competitor. Moreover, Respondent's conduct here in registering the four Domain Names may prevent the owner of the AUDI Mark (or their authorized agent) from registering such Domain Names. In the circumstances, the Panel finds that Respondent's conduct amounts to bad faith registration and use of the Domain Names.
The Panel therefore holds that Complainant has satisfied paragraph 4(a) (iii) 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 Names <audimerriam.com>, <audishawneemission.com>, <merriamaudi.com> and <shawneemissionaudi.com> be transferred to Complainant.
Harrie R. Samaras
Date: July 14, 2017
1 In this proceeding, "Complainant" and "Audi" refer to these three entities in combination.