The Complainant is Volkswagen Group of America, Inc., Herndon, Virginia, United States of America, represented by Phillips Ryther & Winchester, United States of America.
The Respondent is Sergey Asmik, St. Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Media Elite Holdings Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2014. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2014, 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 28, 2014 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 29, 2014.
The Center verified that the Complaint and the amendment 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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2014.
The Center appointed Linda Chang as the sole panelist in this matter on June 11, 2014. 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
Volkswagen AG is a world-renowned automobile manufacturer headquartered in Germany. The Complainant Volkswagen Group of America, Inc., incorporated in the United States of America, is a subsidiary of Volkswagen AG. Audi AG is also a wholly owned subsidiary in Germany of Volkswagen AG. Audi of America is a division within the Complainant Volkswagen Group of America, Inc. Audi was founded in 1914 and is one of the world’s leading automakers, developing, manufacturing, and distributing a wide variety of products, most notably, its Audi brand automobiles.
The Complainant1 owns U.S. registration No. 0708352 for AUDI, registered on December 13, 1960 as well as many additional U.S. registrations, international registrations and European registrations for AUDI and marks that incorporate AUDI.
The disputed domain name was registered on September 22, 2012 and is currently resolved to a website with a number of listings of advertisements for Audi, its competitors and other auto related industries. The website also displays a number of links directed to third party websites for online store, online loan, hotel booking, social network etc.
The Complainant sent a demand letter to the Respondent in March 2014, informing the Respondent of its trademark rights and raised its objections to the registration and use of the disputed domain name, the Respondent however did not respond to the letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its AUDI marks and functionally identical to AUDI. The disputed domain name wholly incorporates AUDI, adding only the geographic qualifier “New Orleans” which is to be omitted in determining whether the disputed domain name is confusingly similar to the Complainant’s mark according to prior panel decisions.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the disputed domain name, nor has he been authorized by the Complainant to use the AUDI marks in any way. The Respondent has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name. The Respondent’s infringing use of the Complainant’s trademarks in the disputed domain name cannot give rise to a right or legitimate interests on the part of the Respondent.
The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s AUDI marks are so famous that it is impossible for the Respondent to claim that he was unaware of the Complainant’s trademark rights or has a legitimate interest in the disputed domain name. The Complainant’s AUDI marks are registered with the U.S. Patent & Trademark Office and throughout the world, which confers constructive knowledge of the Complainant’s rights upon Respondent. The fact that the Respondent intended to benefit from the value of the Complainant’s AUDI marks is demonstrated by the fact that Respondent uses the disputed domain name to display pay-per-click advertisements targeted toward the disputed domain name’s trademarked meaning. The Respondent’s use of the disputed domain name also disrupts the Complainant’s business. The Respondent’s use of a proxy service is another factor indicating bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy, it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel acknowledges that the Complainant enjoys extensive trademark rights to the AUDI marks, inter alia, U.S. registration No. 0708352 registered in 1960.
The Panel noticed that the disputed domain name may possibly read in various ways, however its most reasonable structure is undoubtedly “audi-new-orleans”. Apart from the top-level suffix “.com” which is a necessity for a domain name and would usually be disregarded under the confusing similarity test and “New Orleans” which is the geographical name of one of the United States, the essence of the disputed domain name is “Audi” which is identical with the Complainant’s trade mark.
The fact that the disputed domain name incorporates the entirety of the Complainant’s AUDI marks suffices the test of similarity. Addition of the place name “New Orleans” is insufficient to prevent confusion between the disputed domain name and the Complainant’s marks. See The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010 and PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As contended by the Complainant, the Respondent has not been authorized by the Complainant to use the AUDI marks in any way and the Respondent has no connection or affiliation to the Complainant. In addition, the Respondent is not known by the disputed domain name.
The Panel agrees with the Complainant that the Respondent’s use of the disputed domain name to display pay-per-click advertisement for the Complainant’s competitors is not bona fide use of the domain name for the purpose of paragraph 4(c)(i) of the Policy. See Maplin Electronics Limited v. ME New Enterprise, Mayni Efrem,WIPO Case No. DCO2010-0016, “The use of the Complainant’s trademark to generate pay-per-click advertising revenues by directing Internet browsers to websites other than the Complainant’s websites is not a bona fide offering of goods and services within the terms of the Policy.”
In line with the above, the Panel holds that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of proof therefore shifts to the Respondent to demonstrate otherwise. The Respondent however failed to do so by not responding to the contentions made by the Complainant.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel recognizes that the Complainant’s AUDI marks enjoy a high reputation around the world, which is also confirmed by prior UDRP decisions. See Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett,WIPO Case No. D2008-1053, “The AUDI mark, which has been in use in connection with automobiles since 1925, has been recognized as famous and distinctive.”
The Panel holds that it is highly unlikely that the Respondent had no knowledge of the trade mark AUDI when it registered the domain name in 2012, judged by the fact that the domain name resolves to a website where AUDI marks are displayed and a number of listings redirect web visitors to competitors’ websites. Such behavior is taken as bad faith evidence in previous UDRP decisions. See Playboy Enters. Int’l, Inc. v. Tamara Pitts,WIPO Case No. D2006-0675, “The Panel agrees with the Complainant that the Respondent’s registration of a Domain Name incorporating a very famous mark of which she was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith.”
The Panel therefore finds that the Complainant has satisfied 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 name be transferred to the Complainant.
Linda Chang
Sole Panelist
Date: June 25, 2014
1 The Panel views Volkswagen Group of America, Inc. being a qualified Complainant in the present case based on 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that “a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.”
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