WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Volkswagen Group of America, Inc. v. Domain Name May be for Sale, Check Afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante
Case No. D2018-0897
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 Domain Name May be for Sale, Check Afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic / Hulmiho Ukolen, Poste restante of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <austinaudi.com> (the “Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2018. On April 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 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 April 27, 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 April 30, 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 May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 30, 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 the registered proprietor of a large number of trade mark registrations for AUDI. Its United States trade mark registration number 0708352 for AUDI (the “Mark”) was registered on December 13, 1960. Panels have found that AUDI is distinctive and famous, with a worldwide reputation and goodwill: see, for example, AUDI AG v. Emir Ulu, WIPO Case No. D2005-1030 (<audizubehör.com>, <audi-zubehör.com>, <audi-münchen.com> and <audi-händler.com>).
The websites to which the Domain Name has directed Internet users have been at all material times accessible from within the United States. Austin is, inter alia, a place name in the United States.
The Domain Name was registered on December 13, 2006. The evidence submitted by the Complainant shows that within the last two years the Domain Name has been used to direct Internet users to the official website of one of the Complainant’s competitors.
5. Parties’ Contentions
The Complainant states that it is the exclusive importer of cars manufactured by Volkswagen AG and Audi AG in the United States and is responsible for protecting their trade marks there. It states that both it and Audi AG are subsidiaries of Volkswagen AG.
The Complainant contends that the Domain Name is confusingly similar to the Mark since it incorporates the Mark in its entirety and adds only the geographic qualifier “Austin”. It also contends that the Respondent is not known by the Domain Name, has not been authorized to use AUDI in any way, has no connection or affiliation with the Complainant or its related companies and has never made any bona fide use of the Domain Name. The Complainant alleges that the Domain Name has been used to direct Internet traffic to the websites described in section 4 above, which use cannot give rise to a legitimate right or interest for the purposes of the Policy.
The Complainant notes that the underlying registrant of the Domain Name, Hulmiho Ukolen, has been named in (and ordered to transfer domain names as a result of) at least nine UDRP decisions and is the registrant of a large number of domain names incorporating or misspelling famous trade marks.
Finally, the Complainant submits that, given worldwide fame and reputation of the AUDI trade mark, it is an “internationally strong mark” that has become “so famous that it is impossible for any respondent to claim that he was unaware of Audi’s prior rights”. Accordingly it states that when it registered the Domain Name the Respondent must have been aware of the rights of the Complainant and its group companies in the AUDI trade mark, and of the fact that it had not been authorised to use it, such that the registration was in bad faith. The Complainant also submits that use of the Domain Name since registration and at the time of the Complaint, together with the use of false contact details on the WhoIs, demonstrates that the use of the Domain Name is also in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied
A. Identical or Confusingly Similar
Although it is not the owner of the Mark, there is no evidence to gainsay the Complainant’s submission that it is authorised by the registered proprietor of the Mark to use the Mark and that it is tasked with enforcing it in the United States. There is also no evidence that the Complainant’s account of its group structure is unreliable.
Under section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), an affiliate of a trade mark owner, such as a subsidiary of a parent or of a holding company, is considered to have rights in a trade mark for the purposes of standing to file a complaint. The Panel therefore accepts that the Complainant has rights in the Mark.
The Panel also accepts that the Domain Name is confusingly similar to the Mark. In particular, AUDI is instantly recognisable within the Domain Name as its dominant and distinctive element and the addition of the geographical identifier “Austin” and the generic Top-Level Domain suffix “.com” does not alter that conclusion in any way. Section 1.8 of the WIPO Overview 3.0 permits a finding of confusing similarity in such circumstances, stating that: “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case, having alleged that the Respondent has not been licensed or authorized to use the AUDI mark, whether in the Domain Name or otherwise, and that there is no evidence that the Respondent has acquired any common law rights to use AUDI or that it is commonly known as “Audi”. Furthermore, the use of the Domain Name to direct Internet users to the website of one of the Complainant’s competitors is not a use of the Domain Name that would establish rights or legitimate interests as a result of a bona fide,noncommercial or fair use of it.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was registered due to the clear reference it makes to the Mark. “Audi” does not have any inherent meaning aside from the Complainant’s group of companies nor has any argument for the independent selection of the Domain Name been made by the Respondent. As a result, the Panel must conclude that the Respondent knew both of the Complainant’s rights in the globally recognised AUDI trade mark and that it had not been authorised to use that mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name, in the circumstances, was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorization of the Complainant, rights in the AUDI trade mark.
The Panel also finds that the Domain Name is being used in bad faith. Although the evidence submitted by the Complainant does not include examples of pay-per-click sites, it does show that the Domain Name has been used to provide access to the website of one of the Complainant’s competitors, for the Respondent’s profit. Whether there is anything the Respondent could have said to justify such use is moot, since the Respondent has not made any attempt at such justification.
As a result of the above, the Panel finds that the Domain Name was 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 Domain Name <austinaudi.com> be transferred to the Complainant.
Date: June 13, 2018