WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Group of America, Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-2962
1. The Parties
Complainant is Volkswagen Group of America, Inc., United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <audirockville.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2019, 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 December 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2020. Respondent did not submit any response.
On January 6, 2019, the Center sent an email to the Parties, noting that, presumably due to an administrative oversight, the Center’s Notification of Complaint email was not copied to the email address for the registrant’s administrative and technical contacts provided by the Registrar, and granting Respondent a five-day period to indicate whether it wished to participate in the proceedings. Respondent did not submit any response.
Accordingly, the Center notified Respondent’s default on January 13, 2020.
The Center appointed Roberto Bianchi as the sole panelist in this matter on January 24, 2020. 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, a German corporation, is a leading automaker founded in 1914. Complainant is a subsidiary of Volkswagen AG, also a German corporation. Audi AG is a wholly owned subsidiary of Volkswagen AG. Volkswagen of America, Inc. and Audi of America, Inc. are operating units of Complainant. Complainant is the exclusive importer in the United States of cars manufactured by Volkswagen AG and Audi AG.
Volkswagen AG and Audi AG have charged Complainant with protecting their trademarks in the United States and given Complainant the right to sue for violations of Volkswagen AG’s and Audi AG’s rights in the United States.
Audi AG owns numerous registrations worldwide for the mark AUDI, including in the United States, of which the following registration with the United States Patent and Trademark Office (“USPTO”) is an example:
AUDI, Registration No. 708,352, Registration Date December 13, 1960, filed on November 17, 1959, renewed on September 23, 2010, covering automobiles, including motor cars for personal use and trucks, and structural parts thereof, including automobile heaters and ventilators, locks and closures for automobile coolers, and automobile safety locks, in Class 19.
The disputed domain name was registered on September 28, 2018.
The website at the disputed domain name currently displays a number of “related links”, such as “Rockville Audi” (redirecting to Carmax Rockville, a car dealer), “Audi” (redirecting to an Audi dealer in Buenos Aires1 ), “Music” (redirecting to a video clip on “www.youtube.com”), “Audi Q3” (redirecting to several dealers of cars of diverse brands), “Sport Bets” (redirecting to bet websites), etcetera.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights. The disputed domain name wholly incorporates the AUDI trademark, only adding the geographic qualifier “Rockville”.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not known by the disputed domain name, has not been authorized by Complainant to use the AUDI marks in any way, has no connection or affiliation with Complainant, and has never made any bona fide use of the disputed domain name. The only use that Respondent appears to have made of the disputed domain name – resolving to <volvocars.com> – is not legitimate. Aside from Respondent’s registration and use of the disputed domain name, Complainant has found no evidence of any person or entity using the name “Audi Rockville” except Complainant’s authorized dealer, and any such use would infringe and dilute the AUDI marks, as Complainant’s authorized dealer, with Complainant’s authorization, has the exclusive right to use the business name “Rockville Audi” or equivalents such as “Audi Rockville.”
The disputed domain name was registered and is being used in bad faith. Given the strength and fame of the AUDI marks, Respondent’s bad faith is established by the fact of registration alone. 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 Complainant’s prior rights or has a legitimate interest in domain names that incorporate the mark. The AUDI marks are also registered with the USPTO (Exhibits E-F of the Complaint), which confers constructive knowledge of Complainant’s rights on Respondent.
Respondent was aware of Complainant and intended to benefit from the value of the AUDI marks is further evident from the structure of the disputed domain name itself. In Volkswagen Aktiengesellschaft v. MapleOne Solutions, WIPO Case No. D2003-0326, the panel inferred the registrant was aware of the complainant and, hence, acting in bad faith when, as here, the registrant registered a domain name that had exactly the same structure as the domain names used by the complainant’s dealers.
Respondent’s use of the disputed domain name to resolve to a website advertising competing autos for sale also demonstrates bad faith pursuant to Policy paragraph 4(b)(iv). Respondent’s conduct in offering the disputed domain name for a minimum offer of USD 500 is further evidence of Respondent’s bad faith.
Bad faith is presumed when, as here, the marks are extremely well-known and famous such that “it is not possible to conceive of any plausible, actual or contemplative active use of the domain name” by the registrant “that would not be illegitimate, such as by being a passing-off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Respondent’s bad faith is further demonstrated by Respondent’s long history of cyberpiracy. Respondent’s bad faith is further exhibited by Respondent’s employment of a proxy service to conceal Respondent’s identity from disclosure.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has submitted evidence of multiple registrations by Audi AG for the mark AUDI in the United States. Complaint’s Exhibits E and F. See section 4 above. Since Audi AG and Volkswagen AG have charged Complainant with protecting their marks in the United States, the Panel is satisfied that Complainant has rights in the AUDI marks for purposes of Policy paragraph 4(a)(i).
The Panel notes that in the disputed domain name the mark AUDI is incorporated in its entirety, with the only addition of the geographic term “rockville” as a suffix, and the – technically necessary – generic Top-Level Domain (“gTLD”) “.com”. “Rockville” is the name of several places and towns in the United States.2 It is well established that the addition in a domain name of a geographic term would not prevent a finding of confusing similarity under Policy paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel concludes that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel also notes that the registrant of record of the disputed domain name is “Carolina Rodrigues”, and that the registrant’s organization is “Fundacion Comercio Electronico”. Since there is no evidence that any of these entities is known by the disputed domain name, the application of Policy paragraph 4(c)(ii) should be discarded. For its part, Complainant says it has not authorized Respondent to use the AUDI marks in any way, nor has Respondent any connection or affiliation with Complainant. The Panel does not see any evidence indicating the contrary.
Complainant has submitted evidence that Respondent has redirected the disputed domain name to the website at the <volvocars.com> domain name. In the view of the Panel, this use of the disputed domain name is clearly unfair and illegitimate because it is diverting traffic, presumably intended for Complainant, to a competitor of Complainant. This is evidence that Respondent’s use of the disputed domain name is neither a use in connection with a bona fide offering under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii).
Moreover, considering the present content of the website at the disputed domain name as checked by the Panel under its general powers, the disputed domain name presently is being used to divert Internet users presumably looking for Complainant’s official dealer in Rockville, to a number of websites or locations totally unrelated to Complainant. Furthermore, through these redirections, it is obvious that Respondent is generating click-through income based on its use of the disputed domain name. To the extent that such a conduct is extracting a profit from a use in bad faith, it is neither a bona fide use nor a fair or legitimate noncommercial use.
In the view of the Panel, the evidence and allegations submitted by Complainant are sufficient to raise a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Since Respondent failed to provide the Panel with any explanation whatsoever for its reasons to register and use the disputed domain name as shown, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the trademark registration for AUDI in the United States predates the registration of the disputed domain name for several decades. In addition, “Audi” is, without doubt, a brand most reputed worldwide in regard of automobiles. Moreover, Respondent’s very use of the disputed domain name, first redirecting it to the website of a competitor of Complainant, and then to various other commercial websites, means that Respondent was totally aware of, and targeted Complainant, the AUDI mark and Audi products at the time of registering the disputed domain name. Given the circumstances of this case, the Panel finds that this registration was in bad faith.
In sum, Complainant has shown that the disputed domain name has been used, first, to divert traffic presumably intended for Complainant, to the website of a Volvo dealer, a competitor of Complainant, and later, to generate click-through income by redirecting Internet users to multiple websites of the most varied nature (from automobiles to films to bets on the Internet), clearly for a purpose of profit from click-through income. It is evident that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the AUDI mark as to the source, sponsorship, affiliation, or endorsement of its website or locations or of a product or service on its website or locations, a circumstance of registration and use in bad faith of the disputed domain name, according to Policy paragraph 4(b)(iv).
The Panel finds that the disputed domain name has been registered and is being used 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 <audirockville.com> be transferred to Complainant.
Date: February 7, 2020
1 Redirections and the locations of the businesses shown by the advertising service appear to depend on the IP from which the search is being done (for example by the Panel under its general powers).
2 See https://es.wikipedia.org/wiki/Rockville (visited by the Panel on February 4, 2020).