WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v. Mike Gillespie, Gillespie Auto Group
Case No. D2007-1850
1. The Parties
The Complainant is Audi AG, of Ingolstadt, Germany, represented by HK2 Rechtsanw�lte, Germany.
The Respondent is Mike Gillespie, Gillespie Auto Group, of Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with InnerWise, Inc. d/b/a ItsYourD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2007. On December 14, 2007, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourD a request for registrar verification in connection with the domain name at issue. On the same day, InnerWise, Inc. d/b/a ItsYourD 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 December 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2008. The Response was filed with the Center on January 7, 2008.
The Center appointed David Perkins as the sole panelist in this matter on January 16, 2008. 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
4.A The Complainant
4.A.1 The Complainant is one of the world’s leading car manufacturers and its cars are sold worldwide. In 2006 its Group turnover worldwide was in excess of 31,000 million Euros. The Audi Group has some 52,000 employees and in 2006 produced some 926,000 cars of which 647,000 were sold outside Germany. The AUDI brand has been in use for over 75 years.
4.A.2 The AUDI trademark is very well known and is registered internationally. By way of example the Complaint lists the following:
Countries
Registration No.
Mark
Class
Date of Registration
International
(Madrid) 38 countries
622,241
AUDI
36
July 5, 1997
International
(Madrid) 47 countries
716,147
AUDI
2, 7, 9, 12, 14, 16, 18, 20-21, 25-28 and 37
March 12, 1999
International
(Madrid) 43 countries
657,259
AUDI and 4 ring device
2, 7, 9, 12, 14, 16, 18, 20-21, 25-28 and 37
February 10, 1996
International
(Madrid) 39 countries
879,638
AUDI
4 and 38
January 20, 2006
United States
708,352
AUDI
6, 11 and 12
December 13, 1960
United States
1,079,063
AUDI
37 and 42
December 6, 1977
United States
1,416,583
AUDI (Stylised)
16, 18 and 25
November 11, 1986
United States
1,416,538
AUDI
12, 16, 18, 25 and 37
November 11, 1986
United States
1,416,584
AUDI
16, 18, 21 and 25
November 11, 1986
United States
1,793,869
AUDI
36
September 21, 1993
United States
1,928,291
AUDI
36
October 17, 1995
United States
2,073,484
AUDI and 4 ring device
37
June 24, 1997
United States
2,083,439
AUDI and 4 ring device
12
July 29, 1997
United States
2,912,419
AUDI
9
December 21, 2004
United States
2,987,328
AUDI
6, 9, 12, 16, 18, 20-21, 24-25 and 28
August 23, 2005
4.A.3 The AUDI trademark is also registered in Germany in a number of classes, the earliest registration of the mark AUDI and 4 ring device dating from 1925 and the earliest registration for the word mark AUDI from 1983. The mark AUDI SPORT (30 classes) and AUDI FINANCIAL SERVICE (Class 36) were also both registered in 2004.
4.A.4 The Complainant, affiliated companies and authorized dealers maintain websites under domain names including the AUDI trademark. These include , , , , , , and .
4.A.5 Earlier Decisions under the Policy have acknowledged that the AUDI brand is a well-known, distinctive and famous trademark. In this respect, the Complaint cites Audi AG v. The data in B’s WHOIS database is p,WIPO Case No. D2006-1055; Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003; Audi AG v. This Domain Name May Be For Sale L, WIPO Case No. D2006-1473; AUDI AG v. Emir Ulu, WIPO Case No. D2005-1030 and Audi AG v. Jun Suk Min,WIPO Case No. D2007-0200.
4.B The Respondent
4.B.1 The Respondent operates The Gillespie Auto Group of Chicago. His company sells both new and used cars. The used car inventory includes AUDI vehicles.
4.B.2 The domain name in issue was created on October 3, 2007. That domain name resolves to a website, the purpose of which the Respondent says was to talk about used AUDI cars in the Company’s inventory and to provide a chat forum for customers to share their experiences.
5. Parties’ Contentions
5.A The Complainant
5.A.1 Identical or Confusingly Similar
The domain name in issue is for all intents and purposes identical to and is confusingly similar to the well-known AUDI trademark. Addition of the non-distinctive and descriptive suffix “experience” does not avoid a holding to that effect. The Complaint cites in support of that proposition Ferrari S.p.A .v. JK Marketing,WIPO Case No. D2001-1003. There the domain name in issue was . Finding confusing similarity, the Panel in that case stated:
In comparison with Complainant’s trademark, the disputed Domain Name bears the additional word ‘shop’. However, the word ‘shop’ is a generic term and therefore not a distinctive element for a trademark. In addition, given the world-wide reputation of FERRARI as a high-class sports and racing car, the trademark component FERRARI clearly dominates the disputed Domain Name. Accordingly, Complainant has correctly stated that the disputed Domain Name is confusingly similar to its trademark FERRARI.
5.A.2 Rights or Legitimate Interests
5.A.2.1 The Complainant takes the position that it is for the Respondent to demonstrate rights or legitimate interests once the Complainant has made a prima facie showing. In other words, the burden of proof then shifts to the Respondent. In this respect the Complainant cites the Decision in Do the Hustle, LLC .v. Tropic Web (WIPO Case No. D2000-0624).
5.A.2.2 The Complainant refers to having sent two warning letters to the Respondent, to which no reply was received.
5.A.2.3 The Complainant points to the fact that the AUDI trademark had been in use for nearly 80 years before the date the domain name in issue was created in October 2007. Hence use of the domain name in issue by the Respondent cannot be bona fide.
5.A.2.4 Furthermore, the domain name in issue resolves to a standard Internet page of the domain name provider, ItsYourD which refers to the “” website Coming Soon and in the meantime provides links to sub-sites for “travel”, “computer notebooks”, “music download”, “online dating”, “education online”, “insurance”, “credit card” and “jobs”. It also features an advertisement frame from an external source. The sub-sites offer a list of sponsored links to commercial third party websites.
5.A.2.5 It is not, the Complainant asserts, a legitimate right or interest under the Policy to direct Internet users to other commercial websites. In support of that proposition the Complainant cites Playboy Enterprises International Inc. v. Tonya Flynt Foundation,WIPO Case No. D2001-1002.
5.A.2.6 The Complainant also exhibits the website for Mike Gillespie Auto Group “” which advertises cars which directly compete with the Complainant’s Audi cars, namely Chevrolet, Pontiac and Chrysler.
5.A.2.7 There is, the Complainant says, no evidence that the Respondent or his company have been commonly known by the domain name.
5.A.2.8 Finally, the Complainant contends that use of the domain name to generate pay-per-click revenue is a commercial use. Given the worldwide reputation and fame of the AUDI trademark, such use cannot constitute a fair use under paragraph 4(c)(iii) of the Policy. In that respect the Complainant cites Volvo Trademark Holdings AB v. emotordealer Ltd,WIPO Case No. D2002-0036 (involving the domain name ).
5.A.3 Registered and Used in Bad Faith
5.A.3.1 The Complainant’s case asserts circumstances present in this case which fall under paragraphs 4(b)(iii) and (iv) of the Policy.
5.A.3.2 As to paragraph 4(b)(iii) the Complainant’s case is that the Respondent can only have registered the domain name in issue for the purpose of disrupting the business of a competitor. First, the Respondent being a car dealer must be aware of the AUDI brand. Second, the Respondent sells competitor brands such as Chrysler, Chevrolet and Pontiac. Third, it is reasonable to assume that the Respondent intends to use the domain name in its business. Fourth, registration of a domain name that is confusingly similar to the trademark of a competitor constitutes registration in bad faith. In the circumstances, the Respondent must have registered that domain name to disrupt Audi’s business, either by using the domain name to market other cars or by preventing the Complainant from registering its AUDI trademark in a corresponding domain name.
5.A.3.3 As to paragraph 4(b)(iv), the Complainant’s case is that the domain name in issue clearly creates the impression that it is either owned by Audi or is in some way related to Audi. The suffix “experience” is evocative of association with the AUDI trademark. The Complainant cites by way of illustration a news article describing the “NIKE experience”.
5.A.3.4 The Complainant also relies on use of the domain name to host third party sponsored links (see, paragraph 5.A.2.4 above).
5.A.3.5 The Complainant cites the decision in Nikon, Inc. and Nikon Corporation v. Technilab,WIPO Case No. D2000-1774, which involved a number of NIKON prefixed domain name some with descriptive suffixes, for example, . There the Panelist held that use of that domain name for a website that sold NIKON products and those of its competitors constituted an improper use under paragraph 4(b)(iv) of the Policy.
5.A.3.6 The Complainant also states that the circumstances contained in paragraph 4(b) of the Policy are not exhaustive of the circumstances which can constitute registration and use in bad faith. Consequently, the Complainant advances the following additional bases for a finding in its favor under paragraph 4(a)(iii) of the Policy.
5.A.3.7 First, the Respondent must have known of the extensive registration and use of the AUDI trademark before registering the domain name in issue in October 2007. This is of itself indicative of bad faith. In this respect, the Complainant cites the following decisions under the Policy: Federated Western Properties, Inc. v. Mr. Faton Brezica aka “Its Me Haraqi” and “Its Me Pr”, WIPO Case No. D2002-0083 (the MACY’s trademark versus the domain name complained of ); Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033 (the MASERATI trademark versus the domain name complained of ); Pepsico, In. v. Paul J. Swider,WIPO Case No. D2002-0561 (the PEPSI trademark and PEPSICO tradename versus the domain name complained of ); Soci�t� des Hotels M�ridien v. ABC-Consulting, WIPO Case No. D2004-0792 (the LE MERIDIEN trademark versus the domain name complained of ).
5.A.3.8 Second, the Complainant asserts that registering a domain name but not using it for a website, sometimes known as “warehousing”, is indicative of bad faith registration and use. In this respect the Complainant cites Toyota Motor Sales U.S.A, Inc et al .v. Gulf South Limited, WIPO Case No. D2001-0698 and other Decisions under the Policy cited by the Panelist in that case (the TOYOTA trademark versus the domain names complained of and ).
5.B. The Respondent
5.B.1 Identical or Confusingly Similar
The Respondent contends that the domain name in issue is not identical to, nor is it confusingly similar to the AUDI trademark. He explains that the domain name “… was purchased to talk about the experience of customers who own an Audi vehicle, have a chat forum online, and hold vehicle inventory that the dealership currently owns”.
5.B.2 Rights or Legitimate Interests
5.B.2.1 The Respondent asserts that he acquired the domain name quite legally from ItsYourD. He explains that his company, Gillespie Auto Group, sells both new and used cars. The company’s used car inventory includes AUDI vehicles, which he is entitled to sell online.
5.B.2.2 The Respondent repeats the intended use of the domain name in issue (see, paragraph 5.B.1 above).
5.B.2.3 The Respondent denies that the domain name is being used to direct to a website so as to generate pay-per-click revenue. He explains that the current website page to which the domain name resolves is a “landing page” only, which has been provided by ItsYourD and which will be replaced when the website currently under construction has been completed.
5.B.3 Registered and Used in Bad Faith
5.B.3.1 The Respondent says he has no intention of disrupting the Complainant’s business. The planned website at the domain name is designed to sell used Audi vehicles from Gillespie Auto Group.
5.B.3.2 The intended design of the site was to host a forum or chat room for Audi customers while also showing used Audi vehicles for sale at the Gillespie Auto Group.
5.B.3.3 The Respondent has never had any intention to damage or tarnish the AUDI name and mark.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 Identical or Confusingly Similar
The Panel is satisfied that the AUDI trademark is well-known internationally, including in the United States. That trademark is the dominant feature of the domain name in issue. The suffix is descriptive only. The Panel has no hesitation in finding the domain name to be confusingly similar to the Complainant’s AUDI trademark. This finding is consistent with numerous decisions in comparable cases under the Policy. Accordingly, the Complainant meets the first requirement of paragraph 4(a) of the Policy.
6.6 Rights or Legitimate Interest
6.6.1 There is no evidence that the Respondent or his business, Gillespie Auto Group, is commonly known by the domain name. Indeed, the website for the domain name has not yet been constructed or used by the Respondent.
6.6.2 By reason of the well-known status of the AUDI trademark, absent a consent or license from the Complainant, the intended use of the domain name to sell used Audi vehicles and to provide an Audi customer chat room cannot in this Panel’s view, absent the mark-holder’s authorization, constitute a bona fide offering of goods or services.
6.6.3 As to what constitutes bona fide in the context of a reseller, a suggested approach was advanced in Oki Data America, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. One of the so-called Oki Data requirements is that the Respondent must use the site to sell only the trademarked goods. In this case, the evidence is that the Respondent’s Gillespie Auto Group sells a number of competitor cars as well as used Audi cars. Another requirement is that the site must accurately disclose the registrant’s relationship with the trademark owner. In this case, since the site was never completed nor, consequently, used one cannot say whether or not this requirement would be met.
6.6.4 In the Oki Data case the Complaint failed principally because the Respondent was an authorized seller and repair center, it was using the “” website to promote only OKI DATA goods and services, and it prominently disclosed that it was merely a repair center, not Oki Data itself. In this case, there is no evidence that the Respondent is an authorized AUDI dealer, the indications being to the contrary.
6.6.5 However, the applicability of the Oki Data requirements are not universally accepted by Panelists deciding administrative actions under the Policy particularly in unauthorized reseller situations in which the trademark is fully incorporated into the domain name at issue. See, e.g., General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi,WIPO Case No. D2007-0645. This Panelist takes the view that Oki Data requirements tend to confuse the reseller’s right to sell the goods with the question as to whether that right extends to incorporating the manufacturer’s trademark in the reseller’s business name or any other type of business identifier, such as a domain name.
6.6.6 For example, in a Decision from the European Court of Justice in Case C-63/97 [BMW .v. Deenik], the Court held that where Mr. Deenik was in the business of selling second-hand BMW cars and of repairing BMW cars, any use by him of the BMW trademark in the context of that business could only be legitimate if, in effect, it was essential. Further, such use must also not take unfair advantage of the reputation of the BMW mark and must be fair in relation to the interests of the trademark owner. If the mark is used in such a way that may create the impression that there is a commercial connection between the manufacturer and the reseller, in particular that the reseller is affiliated to the trademark owner’s distribution network, it will not be permissible use.
6.6.7 In the context of the intended use of the domain name, absent specific authorization or license from the Complainant, the Panel considers such use would not be bona fide or fair. Accordingly, the Complaint satisfies the second requirement of paragraph 4(a) of the Policy.
6.7 Registered and Used in Bad Faith
6.7.1 Given the well-known status of the AUDI trademark, the Panel finds registration to be in bad faith. The fact that the domain name was offered for sale by ItsYourD does not legitimize registration of a domain name which is so plainly confusingly similar to the AUDI trademark.
6.7.2 As to use, the Panel rejects the Complainant’s case that the Respondent’s primary purpose in registering the domain name was to disrupt the Complainant’s business. The Respondent has clearly stated his intention, namely to sell used Audi cars through his company and to provide Audi car owners with a chat room to exchange their experiences with Audi cars.
6.7.3 However, the Complainant’s AUDI trademark is an exceptionally valuable asset of the Complainant and where, as in this case, the domain name in issue is confusingly similar to that trademark, there is a likelihood that Internet users would be attracted to it in the belief that it was in some way sponsored, affiliated or licensed by the Complainant. Since there is no such affiliation, the intended use of the domain name would constitute bad faith use under the Policy. Accordingly, the Complaint meets the third requirement under paragraph 4(a) of the Policy.
6.7.4 In the light of that finding, it is not necessary to determine the disputed fact issue as to whether, as presently used, the Respondent is or is not deriving click-through revenue.
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 domain name be transferred to the Complainant
David Perkins
Sole Panelist
Dated: February 8, 2008
Full & Egal Universal Law Academy