The Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Nurinet, Gyeongju-si, Republic of Korea (“Korea”). 2. The Domain Name and Registrar
The disputed domain name is registered with N. Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2012. On November 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 27, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On November 30, 2012, the Complainant sent an email requesting English to be the language of the proceedings. The Respondent did not make any submission related to the language of the proceedings.
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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2012.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 9, 2013. 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.
The Panel determines that the language of this proceeding is English, as discussed herein. 4. Factual Background
The Complainant is Audi AG, a German corporation that has been conducting the world-wide business of manufacturing and selling cars under its famous trademark AUDI.
The Complainant owns national and international trademark registrations, including in Korea.
As a result of the Complainant promoting its trademark through websites, tv-spots, or as a sponsor of sport-clubs or events, AUDI is distinctive and well-known around the world with strong reputation. The Complainant has various domain names containing the trademark AUDI, including , , , and .
The Respondent registered the disputed domain name on October 26, 2009, according to the verification by the Registrar. Internet users who discovered the disputed domain name were directed to a website displaying a notice from “Linecom Trading Co Ltd’s Internet Team” that the domain was for sale and under construction, followed by a notice that the Respondent was looking for investors to develop a new website, “”. Then the Internet users were forwarded to a website called “Counter Free”.
The Complainant sent the Respondent a cease-and-desist-letter on December 16, 2011, but the Respondent failed to reply in time, and defaulted. 5. Parties’ Contentions A. Complainant
The disputed domain name, , is identical or at least confusingly similar to the trademark AUDI, because it contains the word “audi”. A generic top-level domain (gTLD) such as “.com” does not avoid the finding of confusing similarity, and that the part following the trademark, “experience”, is descriptive only.
The Respondent does not have rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not used for bona fide offering of goods or services. The Respondent recklessly continued to use the disputed domain name even after the cease-and-desist letter from the Complainant. The Internet users were directed to a website intended to sell the disputed domain name to the Complainant or a third party, accompanied by the purpose to advance the Respondent’s own business under “” or under “Counter Free”.
The Respondent is not commonly known by the names comprised in the disputed domain name.
The disputed domain name is not being used for noncommercial or fair use by the Respondent, because the website under the disputed domain name places an offer for sale of the disputed domain name in a way that is confusing for the Internet users and diverting the attraction the Complainant causes for its own enterprises.
The disputed domain name was registered and is being used in bad faith. There are circumstances indicating that the disputed domain name was registered primarily for the purpose of selling it, which indicates bad faith. The fact that the Respondent already knew about the Complainant’s trademark AUDI, and the Respondent’s no action to the cease-and-desist-letter, also point to bad faith. There is a considerable history of bad faith findings in previous proceedings involving the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the Registration Agreement for the disputed domain name is Korean.
Paragraph 11(a) of the Rules provides that, unless otherwise agreed by the parties or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel having regard to the relevant circumstances.
The Panel must exercise discretion judicially, taking into account fairness and justice to both parties with regard to all relevant circumstances, such as parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v Shumin Peng,WIPO Case No. D2006-0432).
The Respondent in a number of previous UDRP proceedings has registered domain names in English with the Registrar (for example, Kshocolat Limited v Nurinet,WIPO Case No. D2010-0577). Also, the information on the website under disputed domain name was provided in both English and Korean, and the Respondent appears to have registered more than 21,800 domain names, many of which are in English. It is also important to note that the Respondent sent an email in English to sell the disputed domain name to the Complainant, which indicates the Respondent’s ability to understand and communicate in English. The Center, in preliminarily deciding to proceed with the acceptance of the Complaint in English nevertheless communicating with the parties in both English and Korean, indicated that it would accept a Response in either English or Korean, and that it would appoint a panelist familiar with both English and Korean.
On the other hand, if the language of proceeding were to be Korean, the Complainant would require translation of all correspondence, which would delay the proceeding and incur substantial expenses (Louise Rennison v Milan Kovac,WIPO Case No. D2012-0211).
Having regard to the circumstances above, the Panel determines that the language of proceeding be English. B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy sets out that the Complainant must prove the following three elements to obtain an order requested;
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not responded to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a response from the Respondent, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based upon the complaint” “in the absence of exceptional circumstances.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.”
Consequently, the Panel must proceed with an assessment of the Complaint on its merits. C. Identical or Confusingly Similar
The Complainant registered and uses its trademark AUDI in many domain names, and also promotes its trademark through sales of cars around the world. It is clear that the Complainant has demonstrated its rights in its AUDI trademark. The Complainant argues that the disputed domain name is identical or confusingly similar to the trademark in which it has rights.
The disputed domain name, , is comprised of three parts; “audi”, “experience”, and “.com”. The gTLD extension, “.com”, can be left out of consideration as it typically has no relevance to the determination of whether there is confusing similarity or not. See Magnum Piercing Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Hugo Boss AG v. Abilio Castro,WIPO Case No. DTV2008-0001.
The first part, “audi”, is identical entirely to the trademark AUDI, and the remaining part, “experience”, is merely descriptive. Another WIPO case involving the domain name (Audi AG v. Mike Gillespie, Gillespie Auto Group,WIPO Case No. D2007-1850) is factually analogous to the issue at hand, in this particular aspect. That was a case where the panel found confusing similarity between the disputed domain name and the trademark concerned, based on the reason that “experience” is a generic term and only a descriptive suffix, not a distinctive feature of the domain name. AUDI is well-known internationally, and it is undoubtedly the dominant feature that is likely to confuse the Internet users.
The disputed domain name wholly incorporates the Complainant’s distinctive trademark and in the Panel’s view creates sufficient similarity to be deemed identical to or confusingly similar to the Complainant’s trademark pursuant to paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is well established that “once a Complainant establishes prima facie showing that none of the three circumstances in paragraph 4(c) of the Policy establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing.” See Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Complainant asserts that there was no bona fide offering of goods or services in connection with the Respondent’s use of, or demonstrable preparations to use, the disputed domain name. The Respondent in the present case used the disputed domain name containing the Complainant’s world-famous trademark to bait Internet users to buy the disputed domain name, look for investors for development of “”, and switch the Internet users to “Counter Free” website. There is no intention to carry out a business of offering goods or services under the disputed domain name. This shows that the Respondent was using the website solely for generating revenue for its own business, either under “” or “Counter Free”, by creating consumer confusion as to the owner of the trademark. In the Panel’s view, this indicates no bona fide offering of goods or services. See Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057.
Further, the Respondent has no relationship with the Complainant. The facts before the Panel do not suggest that the Respondent has a license, consent or authority of the Complainant to use the trademark AUDI in the disputed domain name. Without such license, consent or authority, the Respondent apparently used the disputed domain name for the Respondent’s own business. This is considered as lack of any bona fide intention on the part of the Respondent. See Audi AG v. Mike Gillespie, Gillespie Auto Group,WIPO Case No. D2007-1850.
The Panel notes that the Respondent is not commonly known by the disputed domain name. On the contrary, the Respondent appears to be known as Nurinet. There is no evidence or response from the Respondent that Nurinet is authorized or permitted to use the Complainant’s trademarks or acquired own rights.
The Panel further notes that the website under the disputed domain name is not for a noncommercial use, as it makes an offer for sale of the disputed domain name. It is not fair use either, because it confuses the Internet users as to the owner of the trademark AUDI, and diverts the attraction the Complainant’s trademark causes to its own commercial enterprises. See Volvo Trademark Holding AB v. e-motordealer Ltd,WIPO Case No. D2002-0036.
The fact that the website under the disputed domain name has been subsequently deactivated does not preclude the Panel’s above finding in the circumstances of this case.
Further, the Respondent has not submitted any reply to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
The Respondent used the disputed domain name to offer it for sale to the Complainant or a third party to gain commercial benefit of USD 10,000, which exceeds the out-of-pocket costs directly related to the disputed domain name. Such conduct falls under 4(b)(iv) of the Policy, constituting registration and use in bad faith.
Further, where the Respondent knew or should have known about the Complainant’s trademark and still used it for own gains, it could also be evidence of bad faith. See Federated Western Properties, Inc. v. Faton Brezica aka “Its Me Haraqi” and “Its Me Pr”,WIPO Case No. D2002-0083; Ferrari S.p.A v. Allen Ginsberg,WIPO Case No. D2002-0033. The Respondent in the present case knew the existence of the trademark AUDI, and the effects it will have on the Internet users, judging by the fact that the Respondent deliberately incorporated the trademark in the disputed domain name to attract Internet users. Even if the Respondent did not have actual knowledge, the Panel is of the opinion that the Respondent should have known the Complainant’s trademark rights, given the strength and fame of AUDI trademark. The Complainant owns various national and international trademark registrations and runs numerous websites under domain names including its trademark. Any reasonable search of domain names at the time of registering the disputed domain name would have revealed to the Respondent the trademark rights of the Complainant.
Lastly, there is a history of prior bad faith findings in cases involving the Respondent, for example, LEGO Juris A/S v. Noori net,WIPO Case No. D2010-1705; Banco Bradesco SA v. N,WIPO Case No. D2010-1553; Credit Industriel et Commercial SA v. Noori net,WIPO Case No. D2010-0729; Kshocolat Ltd v. Nurinet, WIPO Case No. D2010-0577. The Panel notes that it can be a proof of the Respondent’s tendency to act in bad faith.
For these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
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 be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Date: January 24, 2013
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