WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. eTraffic Management, Inc.
Case No. D2007-0868
1. The Parties
The Complainant is Audi AG, Ingolstadt, Germany, represented by HK2 Rechtsanw�lte, Germany.
The Respondent is eTraffic Management, Inc., Tucson, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on June 13, 2007 and in hardcopy on June 15, 2007. On June 15, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On June 15, 2007, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the 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”), 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 the Respondent of the Complaint, and the proceedings commenced on June 22, 2007. On July 9, 2007 the Complainant requested for suspension of the administrative proceedings. The Center suspended the administrative proceedings until August 11, 2007. An extension was requested and notified until August 30, 2007. The Complainant was informed that upon the expiry of this date, the proceedings would be deemed automatically terminated, unless the Center received a request in writing from the Complainant to re-institute the proceedings. On August 30, 2007 the Complainant requested the re-institution of the proceedings. The proceedings were re-instituted on September 3, 2007.
In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2007. The Respondent was informed that if it’s response was not received by that date, it would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2007.
The Center appointed Vinod K. Agarwal, Former Law Secretary to the Government of India as the sole panelist in this matter on October 5, 2007. 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
From the Complaint and the various annexure to it, the Panel has found the following facts:
Complainant’s activities
The Complainant is a famous car manufacturer. The Complainant’s name and mark “Audi” is also famous world-wide. The Complainant is the owner of the registered trademark AUDI and it ranks 74th among the top 100 brands in the world. The Complainant employs approximately 52,000 employees and had manufactured more than 926,000 cars in the year 2006. The companies managed and controlled by the Complainant are known by the term “Audi Group”. It mainly consists of Audi AG, Audi Hungaria Motor Kft, Automobili Lamborghini Holding S.p.a., Quattro GmbH, etc. In addition, there are Principal Sales Subsidiaries, such as, Audi Australia Pty. Ltd., Audi Japan KK. etc.
The Complainant’s trademark AUDI is registered for many classes of goods in many countries including Germany. In the United States of America it is registered since December 1960 for automobiles, motor cars, trucks, etc.
Respondent’s Identity and Activities
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to paragraph 4(a)(i) of the Policy, the Complainant contends that amongst consumers worldwide it is known as “Audi”. The Complainant holds numerous national and international trademarks containing the string “Audi”. The Complainant, affiliated companies and authorized dealers run various websites and domain names which include the trademark “Audi”, such as, , , , , , , etc.
Thus, the domain name is very much identical or confusingly similar to the name and trademarks of the Complainant.
In relation to paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name .
Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for creating confusion and misleading the general public and the customers of the Complainant.
The Complainant has relied on the decision in the case of Alcan Inc. v. Digicom Technologies Inc.WIPO Case No. D2003-0388 wherein the Panel has held that, there was no evidence to suggest that the respondent had ever used, or demonstrated preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Thus, it is contended that there were no rights or legitimate interests of the respondent in the domain name.
Regarding the paragraph 4(a)(iii) of the Policy, the Complainant contends that the main object of registering the domain name by the Respondent is to divert the customers of the Complainant to pornographic websites and to receive subscription from them. The Complainant has stated that the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”. See the decisions of The Chip Merchant Inc. v. Blue Star Electronics, d/b/a Memory World,WIPO Case No. D2000-0474 and Yamaha Corporation v. Zhoule, WIPO Case No. D2004-0126 and Organization Committee for the World Championship of Alpine Ski in 2009 v. Kenny E. Granum,WIPO Case No. D2006-0264.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name . The name of the Complainant is Audi AG. The Complainant’s trademark is AUDI. The name, “Audi” as used in the domain name is almost identical and confusingly similar in appearance and pronunciation. In the disputed domain name “audi” only the word “group” has been suffixed. Though the name of the Complainant does not use the word “group” specifically, nevertheless the Complainant is the owner of a group of companies. Furthermore, the addition of a generic term does not render the domain name different or distinctive from the trademark.
The Complainant has relied on the decision in ARAG Allgemeine Rechtsschutz-Versicherungs-AG v. Seung Nam Kim,WIPO Case No. D2006-1001. In this case the Panel observed that “The word “group” is generic. It does little to distinguish the disputed domain name from the Complainant’s mark.” In Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003, Audi AG v. Emir Ulu,WIPO Case No. D2005-1030, Audi AG v. Jun Suk Min,WIPO Case No. D2007-0200 The panelists have held that “Audi” is a well-known trademark that has acquired a strong reputation and that the trademark is both distinctive and famous.
Thus, the Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant. Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial 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.
The Respondent has not filed any response in this case. Once the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests, the burden of proof is on the Respondent to establish the fact that it has rights or legitimate interests in the disputed domain name. In Europay International S. A. v. E., EuroC, and Chad Folkening, WIPO Case No. D2000-0173 the Panel observed: “It is relatively difficult for any complainant to prove beyond a shadow of doubt that a respondent has no rights or legitimate interests in a domain name. For the most part, the information is known to and within the control of the Respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be light.” Further, the disputed domain name is not used by the Respondent for the bona fide offering of goods or services. In this respect the contention of the Complainant is that the domain name at issue attracts Internet surfers to pornographic websites of the Respondent with the intention to sell these users subscription contracts.
There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. “Audi” is the name and mark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use the domain name incorporating said name.
Based on the default and the evidence in the Complaint, the Panel finds that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the 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 has 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 it 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 on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has linked the domain to a pornographic website. The Complainant’s reputation suffers serious damage if domain names similar to the trademark point to pornographic websites. There may also be countries in which exposing pornographic material is unlawful.
Furthermore, the Panel finds that the domain was probably registered or acquired primarily for the purpose of selling the domain name to the owners of the trademarks, the Complainant, or to the competitors of the Complainant, for valuable consideration. Additionally, the domain name was offered to be transferred to the Complainant immediately after the present Complaint was filed.
This and other information submitted by the Complainant leads to the presumption that the domain name in dispute was registered and used by the Respondent in bad faith. Accordingly, the Panel finds that the Respondent registered and used the domain name in bad faith. Paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
In light of the forgoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Vinod K. Agarwal
Sole Panelist
Dated: October 19, 2007
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