WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Audi AG, Volkswagen AG v. Miranda Wagner

Case No. D2011-2170

1. The Parties

Complainants are Audi AG of Ingolstadt, Germany and Volkswagen AG of Wolfsburg, Germany, represented by HK2 Rechtsanwälte, Germany.

Respondent is Miranda Wagner of Madrid, Spain.

2. The Domain Names and Registrar

The disputed domain names <ecoaudi.com> and <ecovolkswagen.com> are registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 9, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names.

On December 13, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names.

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 proceedings commenced on December 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2012. An informal response was filed with the Center on December 25, 2011.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 24, 2012. 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

There are two Complainants in this case.

The first is Audi AG. It is a German corporation with its principal office in Ingolstadt, Germany. It is a well-known car manufacturer with revenues in excess of EUR 35,000 million in 2010. Audi is the owner of various trademarks around the world that comprise or incorporate AUDI. They include Community Trade Mark no. 18812 dated May 26, 1998 in classes 9, 12, 14, 16, 18, 20, 25, 27, 28, and 37 for the word mark AUDI.

The second Complainant is Volkswagen AG. It is a German corporation with its principal office in Wolfsburg, Germany. It is one of the world’s largest car manufacturers with revenues in excess of EUR 126,000 million in 2010. Volkswagen is the owner of various trade marks around the world that comprise or incorporate VOLKSWAGEN including Community Trade Mark no 703702 dated May 10, 1999 in classes 1 – 42 for the word mark VOLKSWAGEN and International Madrid Registration no 702679 dated July 2, 1998 in classes 1- 42 for the word mark VOLKSWAGEN, valid in a number of countries (with a filling date of December 23, 2003).

Complainants belong to the same group.

The disputed domain names were registered on September 7, 2011.

5. Parties’ Contentions

A. Complainant

Complainants contend that the elements “audi” and “volkswagen” of the disputed domain names are identical to Complainants’ trademarks. The added term “eco” is clearly descriptive and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.

Environmental issues have become more and more important for car manufacturers, and both Complainants are known for building environment-friendly cars. Thus, Complainants state this enhances the possibility of confusion.

Complainants asserts that there is no indication of Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Complainants also assert that their use of their marks predates the registration of the dispute domain names by many years.

Complainants cites the consensus view of the existing panel decisions that the Complainant is only required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once, such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name.

With respect to bad faith, Complainants assert that offering the domain to the Complainant or a third party to gain commercial profit constitutes bad faith. In the present case the website resolving under one of the disputed domain names informed in German language: “Sie können die Domain ecoaudi.com kaufen!” (in English: “You can buy the domain ecoaudi.com“).

Complainants states that a substantial part of Internet users would reasonably expect an offer of the Complainants or its authorized enterprises under <ecoaudi.com> and <ecovolkswagen.com> due to the strong reputation of the trademarks AUDI and VOLKSWAGEN. This is especially true having in mind that Complainants are known for building eco-friendly cars. Complainants provide evidence of this statement.

Complainants argue that Respondent “knew or should have known” of the registration and use of the

trademarks of Complainants prior to the registration of the disputed domain names. Complainants’ use of their marks predates the registration of the disputed domain names by many years. Complainants’ history as world-famous manufacturers of cars reach back for decades. Complainants’ trademarks belong to the globally best known trademarks. The Respondent must have had actual and constructive knowledge about Complainants’ trademarks when acquiring the disputed domain names.

Finally, Complainants argue that bad faith can also be ascertained when a respondent shows a certain pattern of conduct. It is consensus view under existing panel decisions that a respondent engaged in a pattern of conduct when it has registered multiple domain names which are similar to trademarks (citing WIPO Overview of WIPO Panel Views on selected UDRP Questions, “WIPO Overview 2.0”, paragraph. 3.3). In this case, Respondent has registered at least three more domains using the same scheme as in the present case: <ecovolvo.com>, <ecobmw.com> and <ecotoyota.com>.

The remedy requested is that the domain names be transferred to Complainants.

B. Respondent

Respondent did not file a formal response.

However, on December 25, 2011, Respondent sent an email to the Center with the following content: “ecovolkswagen.com ecoaudi.com domain and the date of registration of the domain were no registered trademark of the applicant, and now I have no information indicating the contrary, and if they have registered the mark after it I registered the domain is the problem not mine in relation to the case D2011-2170, I have to say that the domain does not match any registered trademark, and that information is accessible to anyone. So we can communicate better, just write in Spanish o Portuguese. Thanks”.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. Complainants must satisfy that:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect of such domain names; and

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainants are the owners of the AUDI, and VOLKSWAGEN trademarks. Complainants’ trademarks are very well-known.

The disputed domain names are confusingly similar to the Complainants’ trademarks. The addition of the term “eco” before the trademarks AUDI and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants’ trademarks.

In addition, environmental issues are becoming more and more important for car manufacturers, and both Complainants are known for building environment-friendly cars (see Audi AG and Volkswagen AG v. Glenn Karlsson-Springare WIPO Case No. D2011-2121).

Therefore, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. Complainants have not authorized, licensed or permitted Respondent to register or use the disputed domain names or to use the trademarks. Complainants have prior rights in the trademarks which precede Respondent's registration of the disputed domain names. The disputed domain names are not in use. Complainants have therefore established a prima facie case that Respondent has no rights and legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption.

Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainants must prove both that the disputed domain names were registered in bad faith and they are being used in bad faith.

Complainants’ allegations with regard to Respondent's registration and use of the disputed domain names in bad faith has been considered by the Panel. These allegations have not been contested by Respondent.

The disputed domain names are currently not being used. The disputed domain name <ecovolkswagen.com> is only displaying a blank page. The disputed domain name <ecoaudi.com> is displaying a blank page with the text: “Services for this domain have been discontinued”. However, Complainants state that on October 10, 2011, such domain name was displaying sponsored links as evidenced by the screenshot in Annex 12 of the Complaint. Respondent has not denied this assertion.

Considering that Complainants’ trademarks are well-known trademarks, the Panel is satisfied that Respondent must have had knowledge about Complainants’ trademarks when acquiring the disputed domain names.

Complainants’ trademarks are famous and must have been known to Respondent when registering the disputed domain names. These domain names are highly unlikely to have been registered if it were not for Complainants’ trademarks. In this respect, for AUDI see Audi AG v. Mike Gillespie, Gillespie Auto Group, WIPO Case No. D2007-1850, and Volkswagen AG v. Zigoumis, Constantine, WIPO Case No. D2008-0755. Earlier UDRP panel decisions have confirmed that the trademark VOLKSWAGEN has a strong reputation. See Volkswagen AG v. Domain Manager, WIPO Case No. D2004-0191; Volkswagen Aktiengesellschaft v. LaPorte Holdings, WIPO Case No. D2005-0780; Volkswagen AG v. Davids Volkswagen Page, WIPO Case No. D2004-0498; Volkswagen AG v. NovaNIC, WIPO Case No. D2005-0142; Volkswagen AG v. Zigoumis, Constantin, WIPO Case No. D2008-0755 and Audi AG and Volkswagen AG v. Glenn Karlsson-Springare, WIPO Case No. D2011-2121.

In view of the Panel, bad faith is also evidenced by the fact that Respondent has registered other domain names under the same scheme (<ecovolvo.com>, <ecobmw.com> and <ecotoyota.com>).

The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).

Respondent has registered the disputed domain names, but has not put it to any material use and is therefore holding the disputed domain names passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

For all the foregoing circumstances, the Panel finds that the disputed domain names have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <ecoaudi.com> be transferred to Audi AG and the disputed domain name <ecovolkswagen.com> be transferred to the Volkswagen AG.

Pablo A. Palazzi
Sole Panelist
Dated: February 7, 2012