The Complainant is Koenigsegg Automotive AB, Sweden, represented by Umberg Zipser LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / MPH Club, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2021, 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.
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 the Respondent of the Complaint, and the proceedings commenced on September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on October 6, 2021. 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 BackgroundThe Complainant was founded in 1994. It is located in Sweden and is a manufacturer of high-end automobiles and sports cars. The Complainant has affiliate dealers operating in 41 locations in 22 countries, including in North Miami, Florida, United States.
The Complainant has been using the trading style KOENIGSEGG since its formation and is the owner of many trade mark registrations for KOENIGSEGG including, by way of example only, United States trade mark, registration number 3671818, in class 12, registered on August 25, 2009.
The disputed domain name was registered on May 12, 2014. As at December 2018, the disputed domain name resolved to a website containing information about the Complainant and its vehicles. On December 20, 2018, a cease and desist letter was sent to the Respondent on behalf of the Complainant objecting, amongst other matters, to the Respondent’s use of the Complainant’s trade marks and copyright images without the Complainant’s consent and requesting a transfer to it of the disputed domain name. As at May 5, 2021, a WhoIs search conducted via the Registrar for the disputed domain name produced results indicating that it was for sale at a price of USD 50,000. The disputed domain name presently resolves to a Registrar parking page with links to commercial websites.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The disputed domain name contains its KOENIGSEGG trade mark in full and merely adds the geographical identifier “miami”. Neither this generic word, nor the addition of the generic Top-Level Domain (“gTLD”) “.com”, prevents the disputed domain name from being found to be confusing similar to the Complainant’s mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. To the Complainant’s best knowledge, the Respondent is not currently known, and has never been known, by the disputed domain name. The Respondent is not in any way related to the Complainant’s business, is not one of the Complainant’s agents and does not carry out any activity for it. The Complainant has never authorized the Respondent to make any use of, nor apply for the registration of, the disputed domain name. The inactive status of the disputed domain name does not amount to a bona fide offering of goods and there is no evidence of the Respondent having made demonstrable preparations to use it in connection with a bona fide offering of goods or services. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name. Moreover, it is difficult to imagine a situation in which the Respondent could offer goods or services under the disputed domain name that would not infringe the Complainant’s rights in its KOENIGSEGG trade mark.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. Following receipt of a cease and desist letter from the Complainant’s representatives, the Respondent advertised the disputed domain name for sale at a price of USD 50,000. This comprises direct evidence that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for a sum in excess of its documented out-of-pocket costs directly related to the disputed domain name and therefore amounts to the circumstance of bad faith registration and use set out at paragraph 4(b)(i) of the Policy.
Further, given the Complainant’s longstanding and extensive use of its KOENIGSEGG trade mark and the fact that it is linked to the Complainant, the Respondent must have been aware of the Complainant’s rights when it registered the disputed domain name. Finally, the lack of an active website associated with the disputed domain name amounts to bad faith passive holding of it; see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 SimilarThe Complainant has provided details of a number of the registered trade marks it owns for KOENIGSEGG, including the registration in respect of which full details have been provided above, which thereby establish its rights in this mark.
As a technical requirement of registration, the gTLD, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s KOENIGSEGG mark in its entirety followed by the word “miami”. This additional term does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s KOENIGSEGG trade mark is clearly recognizable within the disputed domain name, and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
The Complainant has not provided evidence of the Respondent’s initial use of the disputed domain name, which evidently ceased at some point after the Complainant’s letter to it in December 2018, objecting to the Respondent’s use on its website of its copyright images and its trade marks. Accordingly, while the exact nature of this past use is unclear, in the absence of any response, the Panel finds it more likely than not that use of the Complainant’s trade marks and copyright images without the Complainant’s consent in a domain name that is confusingly similar to the Complainant’s trade marks would neither constitute a bona fide offering of goods or services, nor a noncommercial fair use.
So far as the Respondent’s use of the disputed domain name at the time of Complaint filing is concerned, simply parking the disputed domain name with the Registrar does not comprise a bona fide offering of goods and services; see Sports Holdings, Inc. v. MB,
WIPO Case No. D2006-1262. The first circumstance outlined above is accordingly not fulfilled. There is no evidence to indicate that the Respondent has been commonly known by the disputed domain name and the second circumstance set out at paragraph 4(c) of the Policy is therefore equally inapplicable. Nor is the third circumstance applicable; non-use of the disputed domain name or parking the disputed domain name with the Registrar does not equate to a legitimate noncommercial use of it. Furthermore, the characteristics of the disputed domain name are suggestive of an affiliation or connection with the Complainant, namely that the disputed domain name is likely to be that of the Complainant’s Miami-based affiliate dealership, which prevent its composition from comprising fair use. In this respect, see section 2.5.1 of the WIPO Overview 3.0; “[W]here a domain name consists of a trademark plus an additional term (at the second- or Top-Level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithAs at the date of registration of the disputed domain name in May 2014, the Complainant had been using its KOENIGSEGG mark since its establishment approximately 20 years earlier. The disputed domain name comprises the Complainant’s distinctive KOENIGSEGG mark in full and adds the word “miami”, being one of the locations where the Complainant has an affiliate dealership. The composition of the disputed domain name, coupled with the failure of the Respondent to provide any explanation which might provide a good faith justification for its registration of it, provide persuasive evidence that the Respondent was aware of the Complainant’s KOENIGSEGG mark as at the date of registration of the disputed domain name and that it was registered in order to take unfair advantage of the Complainant’s mark in some manner. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,
WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. See also Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc.,
WIPO Case No. D2007-1833. The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.
The Complainant claims that the disputed domain name did not resolve to an active website at the time of filing the Complaint. The Panel notes a respondent’s non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. In this respect, see section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The factors that are typically considered when applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealment of its identity or its use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put. See also Johnson & Johnson v. Daniel Wistbacka,
WIPO Case No. D2017-0709.
Applying these factors to the current circumstances: (i) the Complainant’s KOENIGSEGG mark is inherently distinctive; (ii) the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain name; (iii) the details of the underlying registrant have been protected from the public WhoIs record by a privacy service; and (iv) the Panel is unable to consider any plausible good faith use to which the disputed domain name could be put. These circumstances support a finding of bad faith.
Furthermore, the Panel notes the disputed domain name currently resolves to a Registrar parking page with commercial links, at least some of which appear to be offering goods or services in competition with the Complainant. Whilst the use of a domain name to point to a parking page hosting sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it resolves are intended to mislead Internet users. Here, such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith (see section 3.5 of the WIPO Overview 3.0).
Moreover, paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include, at paragraph 4(b)(i), circumstances indicating a respondent has registered or acquired a 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 trade mark 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 name. Offering the disputed domain name for sale at a price of USD 50,000, which will have been well in excess of the Respondent’s costs of registration, falls within the circumstance of bad faith registration and use described at paragraph 4(b)(i) of the Policy.
For the above reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
7. DecisionFor 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
Antony Gold
Sole Panelist
Date: October 20, 2021