The Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Shu Lin of Zhongshan District, Dalian, China / A Domain Privacy of Beaumaris, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2014. On May 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2014, the Registrar transmitted by email to the Center its verification 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 May 22, 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 May 26, 2014.
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 May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2014.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 30, 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
The Complainant is one of the biggest car-manufacturers in the world and has proved that the trademark AUDI enjoys thorough protection through numerous registrations worldwide. Complainant has proved to be also the owner of the German (word) trademark AUDI ACCESS registered on July 23, 2001.
The Complainant appears to be the holder amongst others of the domain names (through its affiliate company “Audi of America”) and .
The domain name is used as a tool provided by the Complainant to dealership personnel to access the information and systems needed to sell and service Audi vehicles, parts and accessories.
The disputed domain name was registered on March 29, 2009. The website at the disputed domain name displays a parking page solely composed of sponsored links, some of them leading to car-related websites and others to Complainant’s direct competitors, such as Peugeot and Volvo.
The Complainant’s trademark registrations long predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant claims that the AUDI trademark is a well-known trademark with strong reputation, that the disputed domain name is confusingly similar to the Complainant’s renowned AUDI registered trademark and that it is identical to the Complainant’s German trademark AUDI ACCESS; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraph 4(a) requires that the Complainant must demonstrate to the Panel 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 Complainant has established to have rights to the AUDI and AUDI ACCESS trademarks.
The Complainant has argued that AUDI is an extremely well-known trademark and forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional word “access” in the disputed domain name is not dominant, being merely generic and descriptive.
This Panel agrees with the Complainant’s contention that “audi” is the only distinctive part within the disputed domain name and that the addition of the generic term “access” does not avoid the confusing similarity between the disputed domain name and Complainant’s trademark AUDI. Moreover, it is now well established by many previous UDRP decisions that the addition of a generic term (i.e. “access”) to a trademark is generally not sufficient to avoid confusing similarity.
In addition, the disputed domain name, which combines the Complainant’s AUDI trademark with the term “access”, is clearly identical to the Complainant’s German trademark AUDI ACCESS.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark AUDI and identical to the trademark AUDI ACCESS in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case. The Respondent has no connection or affiliation with the Complainant that has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “Audi Access” or by a similar name. Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent registered the disputed domain name aware of the Complainant’s trademark registrations and rights to the AUDI mark.
In fact, considering that the Complainant’s trademark is a renowned trademark that has been registered and used for decades and thus long predates the disputed domain name’s registration, and in the absence of contrary evidence, the Panel finds that the Respondent knew of the Complainant’s services and trademarks and intentionally intended to create an association with the Complainant and its business; that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name; and that the above described use of the disputed domain name, i.e., to divert Internet traffic to a Pay-Per-Click page that featured PPC links to car related websites including some related and leading to Complainant’s competitors, falls clearly within the example of bad faith set out in 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant’s cease and desist letter. Indeed, due to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.
Further inference of bad faith is given by Respondent’s use of a privacy service combined with a non -reaction to the Complainant’s cease and desist letter and the provision of an apparently incorrect postal address to the Registrar.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the disputed domain name in bad faith.
Therefore, 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.
Fabrizio Bedarida
Sole Panelist
Date: July 3, 2014
Full & Egal Universal Law Academy