Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
Respondent is Auto Sports & Imports of Kenosha, Wisconsin, United States, represented by Gagliardi Law LLP, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. Respondent submitted an informal communication on August 9, 2017 but did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 24, 2017. 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
Complainant is a wholly-owned subsidiary of Volkswagen AG (“VW”). Complainant is also the exclusive United States importer of automobiles manufactured by VW and Audi AG (“Audi”), and under agreement with these entities Complainant is charged with the enforcement of VW’s and Audi’s trademark rights in the United States. VW and Audi are longstanding manufacturers of automobiles, and they have held numerous trademarks for VW and AUDI, respectively, for decades in jurisdictions throughout the world, including in the United States.
According to the Complaint, Respondent is the former corporate name and current d/b/a of International European Motor Group, Inc., a business based in Kenosha, Wisconsin.
The Domain Names were registered on February 29, 2008 and March 1, 2008. At various times between the registration of the Domain Names and the present, the Domain Names have resolved to Respondent’s own website, at which automobiles in direct competition with VW and Audi have been offered for sale. At several points between 2010 and 2017, Complainant sent Respondent cease-and-desist letters. Typically, Respondent would cease linking the Domain Names to its own website, but would refuse to transfer the Domain Names to Complainant. Eventually, Respondent ceased linking the Domain Names to its own website, but they continued to resolve to parking pages featuring pay-per-click advertisements. 5. Parties’ Contentions A. Complainant
Complainant argues that it has satisfied all three elements required under the Policy for a transfer of the Domain Names. B. Respondent
Apart from the informal email of August 9, 2017, Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark VW and AUDI marks through its license agreement with VW and Audi, whose well-known VW and AUDI marks have been registered and used in commerce for decades. The Domain Name incorporates the AUDI mark in its entirety and adds the term “Kenosha,” which denotes the location of Respondent’s dealership. The Domain Name incorporates both the VA and AUDI marks in their entirety, and adds the generic term “service,” which is a common term applied to the automotive business. Most auto dealerships in the United States not only feature a showroom full of cars for sale, but also feature a service department for automotive repair and maintenance. In these circumstances, the additional words do nothing to diminish the confusing similarity between the marks and the Domain Names at issue.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
With respect to each of the Domain Names, under Policy paragraph 4(c), Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has used the Domain Names to resolve to Respondent’s main website, where automobiles made by competitors of VW and Audi are offered for sale. This amounts to a bait-and-switch, and is plainly illegitimate under the Policy.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
With respect to each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For the same essential reason as is set forth above in the context of “rights or legitimate interests,” the Panel concludes that Respondent has registered and is using the Domain Names in bad faith. First, it is clear that Respondent had Complainant’s well-known marks in mind when registering the Domain Names. Respondent is, after all, in the automobile business. Respondent’s practice of intermittently pointing the Domain Names to its own website, where cars of VW and Audi competitors are among the offerings, is bad faith use under Policy paragraph 4(b)(iv), quoted above.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Names and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: August 25, 2017
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