WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen Group of America, Inc. v. Above.com Domain Privacy / Shu Lin

Case No. D2018-0432

1. The Parties

The Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.

The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Shu Lin of Dalian, China.

2. The Domain Name and Registrar

The disputed domain name <audiiusa.com> is registered with Above.com Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2018. On February 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2018, 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 the Complainant on February 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 1, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2018.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 11, 2018. 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 AG is a majority owned subsidiary of Volkswagen AG, both German corporations.

The Complainant, Volkswagen Group of America, Inc., is also a subsidiary of Volkswagen AG and the exclusive importer of cars manufactured by Audi AG and Volkswagen AG in the United States of America (USA).

Since 1914, the Audi brand has been used in connection with a wide variety of products, including consumer luxury and sport vehicles, automotive service, automobile parts, automobile accessories, personal apparel, and household goods.

The Complainant’s business conglomerate obtained its first United States registration for the trademark AUDI (Reg. No. 708,352) on December 13, 1960 and has acquired many additional registrations for AUDI since then, in numerous countries. The Complainant is in charge of protecting the AUDI trademark in the United States.

Audi was listed in Interbrand.com’s annual survey of the “Best Global Brands” as the 38th most valuable brand in the world in 2017.

Audi’s official domain name for the United States is <audiusa.com>, registered in 2001.

The Respondent registered the disputed domain name <audiiusa.com> on April 28, 2014.

The Panel accessed the disputed domain name on April 20, 2018, which resolved to a pay-per-click parking page with advertising targeting the automobile market, including references to the trademark AUDI.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name is confusingly similar to the AUDI marks and functionally identical to AUDI. The Complainant owns or controls the AUDI marks, which have been continuously used in commerce for over fifty years. By reason of extensive and longstanding advertising, promotion, and sales of goods and services, the AUDI marks have become famous and well-known. Therefore, the Complainant has established a prima facie case of its rights in the AUDI trademark. The disputed domain name is also phonetically identical to <audiusa.com>, the domain name used by Audi to advertise and sell its vehicles in the United States. The term “Audii” is, moreover, a common misspelling of the AUDI trademark. The difference between “i” and “ii” is inconsequential. Additionally, because the “i” keyboard key is the only key that needs to be depressed twice in rapid succession, it is likely that a typical user would accidentally press the “i” key twice when attempting to type in Audi’s actual domain name, <audiusa.com>. This increases the likelihood of typographical error which constitutes an element that increases the confusing similarity between the disputed domain name and the AUDI marks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the disputed domain name, has not been authorized by Audi to use the AUDI trademark in any way, has no connection or affiliation with Audi, and has never made any bona fide use of the disputed domain name. To the Complainant’s knowledge, the only use that the Respondent has made of the disputed domain name is to forward Internet users that are arguably seeking Audi’s United States website at “www.audiusa.com” to the website of Volvo Cars, a direct competitor in the United States. Such an infringing use of the Complainant’s trademark cannot give rise to a right or legitimate interest on the part of the Respondent. Such use also prevents the Respondent from claiming that it was known by the disputed domain name. Thus, the Respondent cannot claim or establish any legitimate interest in the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Many factors demonstrate the Respondent’s bad faith. Given the strength and fame of the AUDI marks, the Respondent’s bad faith is established by the mere fact of registering a domain name incorporating it. AUDI 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 the prior rights or to have recognized a legitimate interest in domain names that incorporate such marks. The Complainant’s AUDI marks are registered with the United States Patent & Trademark Office (“USPTO”) and also throughout the world, which confers constructive knowledge of the Complainant’s rights upon the Respondent. The fact that the Respondent was aware of Audi and intended to benefit from the value of the AUDI marks is further and irrefutably demonstrated by the fact that the Respondent uses the disputed domain name to direct Internet traffic from Audi’s official website at “www.audiusa.com” to the website of one of its direct competitors. It is well settled that the practice of typo squatting constitutes evidence of bad faith registration of a domain name. Such use of the domain name also constitutes evidence of business disruption pursuant to Policy paragraph 4(b)(iii). The Respondent’s use of a proxy service is yet another factor indicating bad faith. While use of a proxy service is not always evidence of bad faith, the Respondent’s use of a proxy service in this case suggests an attempt to evade accountability. The Respondent’s bad faith is further demonstrated by its history of cyber piracy. The Respondent has been the losing party in numerous prior dispute resolution proceedings involving other domain names incorporating famous trademarks, such as LEGO, BANK OF AMERICA, MICHELIN, and CALVIN KLEIN. The Respondent is a habitual cybersquatter engaged in a pattern and practice of registering and using in bad faith domain names corresponding to the well-known trade names and/or marks of third parties. Furthermore, the Respondent’s use of inaccurate and/or false contact information suggests in the present case that the registration and use of the disputed domain name was in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that “audi” is a term directly connected with the Complainant’s trademarks.

Exhibit 4 to the Complaint shows a trademark registration for AUDI under the USPTO that dates as early as 1960. Exhibit 5 contains a list of several other AUDI trademarks obtained by the Complainant’s business conglomerate in the United States. Exhibit 6 indicates trademark registrations within the European Union and Exhibit 7 provides numerous other international registrations.

According to section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[a] trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.”

The trademark AUDI is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark AUDI merely by the duplication of the letter “i” and by the inclusion of the suffix “usa” (which usually corresponds to the acronym of the United States of America) and of the generic Top-Level Domain (“gTLD”) extension “.com”.

Previous UDRP decisions have found that the mere addition of geographical terms (such as the acronym “usa”) to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017 0284; and Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017 0287).

Concerning the misspelling of the Complainant’s trademark, including an additional “i”, this practice is commonly called typo-squatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201)

It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use 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; 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 trademark at issue.

Based on the Respondents’ default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name was recently used to forward Internet users that were arguably seeking Audi’s website at “www.audiusa.com” to the website of Volvo Cars, Complainant’s direct competitor. Also, the disputed domain name is currently linked to a pay-per-click adverting scheme targeting automobile consumers.

The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why it has chosen the specific term “audiiusa” to compose the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (in April 2014) the trademark AUDI was already well-known and directly connected to the Complainant’s cars.

Also, the disputed domain name used to be linked to Volvo Cars, Complainant’s direct competitor, and is currently being used to host advertisement that targets AUDI consumers.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “audiiusa” together with the gTLD extension “.com” could be a mere coincidence.

Furthermore, by associating the disputed domain name with a pay-per-click parking scheme targeting the automobile market, the Respondent:

(i) creates a likelihood of confusion with the Complainant’s trademark;

(ii) potentially obtains revenue from this practice; and

(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.

Former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Finally, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a misspelled version of a well-known, third party trademark, certainly cannot be used in benefit of the Respondent in the present case.

Such circumstances, associated with (i) the use of privacy services, (ii) the Respondent’s track record of registering variations of well-known trademarks as domain names, and (iii) the lack of any plausible interpretation for the adoption of the term “audiiusa” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

7. Decision

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 <audiiusa.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: April 25, 2018.