The Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Design of Panama, Panama / PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Names and Registrar
The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2013. On October 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2013, 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 October 11, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2013. The Respondent sent two informal email communications to the Center on October 14 and 16, 2013. The Respondent did not submit any formal Response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on November 4, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on November 14, 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 proceedings are conducted in English as this is the language of the disputed domain names’ registration agreements. 4. Factual Background
The Complainant is one of the largest car manufacturers in the world. It distributes luxury automobiles worldwide under the AUDI mark.
The Complainant owns national, international, and community trademark registrations comprising the word “Audi”, extending throughout many countries around the world, including Panama, and Australia.
As a result of the Complainant promoting its trademark through websites, television advertisements, or as a sponsor of sport-clubs or events, the mark AUDI is well known around the world. The Complainant operates websites specifically designed for residents of the countries in which it conducts business, under several domain names including , , , and .
According to the verification by the Registrar, the Respondent registered the disputed domain name on April 12, 2013, and on April 18, 2013.
The disputed domain names currently redirect to a website with an online contact form through which Internet users can inquire about what appear to be replica cars of luxury brands.
Prior to that, the disputed domain names resolved to a reportedly fraudulent site offering financial services in connection with the purchase of luxury cars, requesting an upfront payment of USD 5,000 and 60 installments of USD 250, regardless of the customer’s credit rating.
Upon discovery of these uses, and after having diligently secured proper evidence of the Respondent’s activities under the disputed domain names, the Complainant lodged the present proceedings. 5. Parties’ Contentions A. Complainant
The Complainant’s factual and legal contentions can be summarized as follows:
i. the terms “usa” and “motors” are merely descriptive and therefore cannot serve to avoid confusing similarity of the disputed domain names with the Complainant’s highly distinctive and instantly recognizable AUDI mark;
ii. the offering of knockoff cars under the disputed domain names cannot be regarded as a bona fide offering of goods and services within the meaning of the Policy because the Respondent’s activity not only infringes on Complainant’s design rights but also Complainant’s exclusive right to distribute and offer vehicles under its famous AUDI mark;
iii. the fact that the disputed domain name are registered with a privacy service to conceal the true identity of the registrant further corroborates the conclusion that the websites are part of a fraudulent scheme to simply lure customers into paying a deposit of USD 5,000;
iv. the Respondent is not an authorized dealer of the Complainant’s AUDI cars, nor is the Respondent commonly known by the name “Audi”, “Audi Motors”, “Audi USA”, “Audi Motors USA” or “Audi USA Motors”;
v. the Respondent cannot avail itself of the noncommercial or fair use defense because the website at the disputed domain names have displayed commercial and financial content, albeit of a fraudulent nature;
vi. the goods and services allegedly offered under the website at the disputed domain names violate Complainant’s trademark rights;
vii. if anything, the Respondent offers poor counterfeits of Complainant’s products. To call such products a ‘replication’ of the Complainant’s high quality cars is not only misleading but also fraudulent;
viii. the Respondent was fully aware of the Complainant’s trademark rights in the term Audi, as proven by the fact that the website operated under the disputed domain names contains pictures of an Audi R8 vehicle;
ix. the Respondent uses the Complainant’s well-known AUDI mark to divert Internet users who are expecting to find the Complainant’s products, to a website where customers are lured into making an upfront payment for counterfeit replicas;
x. reports on the Internet indicate that the website associated with the disputed domain names is part of a fraudulent scheme based in Panama with the purpose of luring consumers to pay substantial amounts of money for replica luxury cars that are actually never made nor delivered. B. Respondent
The Respondent did not reply to the Complainant’s contentions but a person by the name of K. Scott simply sent a couple of email communications to the Center on October 14 and 16, 2013, representing that they had purchased the disputed domain names “on good intentions”, and requesting assurances that they could continue to use the disputed domain names. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The gateway question under paragraph 4(a)(i) of the Policy is whether the disputed domain names are identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain names resolve will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
To the Panel’s naked eye, AUDI stands out in the disputed domain names as the Complainant’s instantly recognizable mark that is registered in Germany since 1984 and has worldwide reputation.
Now, in comparing the mark AUDI to “”, and “” being the relevant strings of the disputed domain names for the purposes of determining likelihood of confusion, the Panel finds that the disputed domain names are confusingly similar to the AUDI mark as the latter is embodied in its entirety in the disputed domain names. See Verizon Trademark Services LLC v. The Helard Group,WIPO Case No. D2012-0277 (several UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark).
A finding of confusing similarity is all the more warranted where, as here, the mark incorporated in the disputed domain name is famous. See Audi AG v. Sikes Information Systems, WIPO Case No. D2009-0128
(AUDI is a well-known trademark with a well-established and widespread international reputation); and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Ply, Ltd., WIPO Case No. D2001-0110 “the incorporation of a complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the complainant's trademark”.
The addition of “motors” and “usa” to “audi” only reinforces the connection between the disputed domain names and the Complainant’s mark since Internet users will, in all likelihood, associate the disputed domain names with the Complainant’s business in the United States of America.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s AUDI mark.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain names. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306.)
The Complainant essentially submits that in view of the fraudulent use to which the disputed domain names have demonstrably been subjected, the Respondent cannot avail itself of any of the above-described defenses afforded by paragraph 4(c) of the Policy.
Having regard to the activities of Respondent to offer what appear to be replica cars from luxury carmakers like the Complainant, and financial services for supposedly acquiring those cars, the Panel concludes that said uses of the disputed domain names are not bona fide but presumably illegal as the Respondent’s conduct may well constitute one or more of the following wrongs: an unfair trade practice, trademark infringement, industrial design infringement, and consumer fraud.
Further, the Respondent’s use of the disputed domain names does not constitute a legitimate noncommercial or fair use within the purview of paragraph 4(c)(iii) of the Policy either, because the Respondent was making a profit, or at least sought to make it, by deceptively attracting Internet users to a supposedly official AUDI website so as to expose them to a fraudulent scheme.
In sum, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
Consequently, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Complainant alleges that the Respondent was fully aware of the Complainant’s trademark rights in the term Audi, as proven by the fact that the website operated under the disputed domain names contains pictures of an Audi R8 vehicle.
This circumstance alone has been deemed sufficient to find bad faith registration for the purposes of the Policy. See Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well known trademark, their very use by someone with no connection with the complainant suggests opportunistic bad faith).
The Complainant also submits that the Respondent uses the Complainant’s well-known AUDI mark to divert Internet users who are expecting to find the Complainant’s products, to a website where customers are lured into making an upfront payment for what appear to be counterfeit replicas.
Considering the notoriety of the iconic AUDI mark, the infringing and misleading offering of AUDI cars’ knockoffs under the disputed domain names, the use of a privacy/proxy service to hide the identity of the registrant for both disputed domain names, and the documentary evidence supporting the allegation that the disputed domain names have been used for scam purposes, the Panel has little difficulty to find that the disputed domain names have been used in bad faith upon registration.
Accordingly, the Panel holds that the disputed domain names were registered and are being used in bad faith within the meaning of the Policy.
The Complainant has therefore discharged its burden in connection with paragraph 4(a)(iii) of the Policy. 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 names and be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: November 28, 2013
Full & Egal Universal Law Academy