Complainant is Audi AG of Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.
Respondent is yuan bing of Hangzhou, Zhejiang, China.
The disputed domain name <saic-audi.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 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. In response to a notification by the Center regarding a missing annex to the Complaint, Complainant submitted the missing annex to the Complaint on March 9, 2017.
On March 9, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on March 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on April 7, 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.
Complainant, Audi AG, is a company incorporated in Ingolstadt, Germany. It is one of the biggest car manufacturers in the world. The worldwide deliveries of Audi cars reached a number of approximately 1,803,246 cars worldwide in 2015. Complainant offers its customers various kinds of cars which are produced globally, e.g., in Germany, India or China (Annex 5 to the Complaint).
Complainant has exclusive rights in AUDI and AUDI related marks (hereinafter “AUDI marks”). Complainant is the exclusive owner of several AUDI mark registrations worldwide, including an international trademark registration for AUDI & Design, covering also China, registered since February 10, 1996 (international registration number 657259); and a European Union trademark registration for AUDI, registered since February 18, 2012 (European Union trademark registration number 009930751) (Annex 6 to the Complaint). Complainant also owns and operates several domain names which contain the AUDI mark in entirety, such as <audi.cn>, <audi.de>, <audi.com>, and <audi.us>.
Respondent is yuan bing of Hangzhou, Zhejiang, China. The disputed domain name <saic-audi.com> was registered on November 8, 2016, long after the AUDI marks were registered. The disputed domain name does not resolve to an active website.
Complainant contends that the disputed domain name is identical or confusingly similar to the AUDI marks.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name <saic-audi.com> be transferred to it.
Respondent did not reply to Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Complainant is not familiar with Chinese.
b) Complainant refers to previous UDRP decisions and contends that:
(i) Complainant is a company located in Europe and has no familiarity with the Chinese language, to proceed in Chinese, Complainant would have to retain specialized translation services at a disproportionately high cost which would impose a burden on Complainant;
(ii) The disputed domain name was registered in Latin character. Respondent owns other domain names consisting of Latin characters and English words;
(iii) It is important to “ensur[e] that the administrative proceeding takes place with due expedition”, and “requiring Complainant to translate all the documents would delay matters significantly”.
c) In previous UDRP cases, in order to enable a quick and just proceeding, the Center made preliminary determinations to:
(i) accept a Complaint filed in English;
(ii) accept a Response in either English or Chinese;
(iii) appoint a Panel familiar with both languages mentioned above, if available.
Complainant would accept such a procedure in this case as well.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement.” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters and the terms “saic” and “audi” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <saic-audi.com> is registered in Latin characters, rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain name is “.com”. So the disputed domain name seems to be selected for users worldwide, including English speaking countries; (c) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (d) The Panel also notes that the Center informed Respondent that it would accept a response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, paragraphs 4(a) - (c), the Panel concludes as follows:
The Panel finds that Complainant has rights in the AUDI marks acquired through registration. The AUDI marks have been registered internationally (covering China) since 1996.
The disputed domain name <saic-audi.com> comprises the AUDI mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the prefix “saic”, a hyphen between “saic” and “audi”, and the generic Top-Level Domain (“gTLD”) suffix “.com” to the AUDI marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. By contrast, it may increase the association between the disputed domain name and Complainant’s mark. Based on information provided by Complainant, one day before the registration of the disputed domain name (November 8, 2016), the Chinese website “autohome.com.cn” published information in relation to the cooperation between SAIC and AUDI (Annex 10 to the Complaint). Therefore, the combination of the trademarks SAIC and AUDI may confuse Internet users to believe that the website resolved by the disputed domain name belongs to or authorized by Complainant and SAIC.
Moreover, WIPO Overview 2.0 states:
“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Thus, the Panel finds that a hyphen between “saic” and “audi”, and the gTLD suffix “.com” are not sufficient to negate the confusing similarity between the disputed domain name and the AUDI marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
According to the Complaint, Complainant is one of the biggest car manufacturers in the world. The worldwide deliveries of Audi cars reached a number of approximately 1,803,246 cars worldwide in 2015. Complainant offers its customers various types of cars which are produced globally, such as in Germany, India or China. Complainant has rights in the AUDI marks since 1996, which long precede Respondent’s registration of the disputed domain name (2016).
Moreover, Respondent is not an authorized dealer of AUDI branded products or services or otherwise authorized to use the AUDI marks. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “audi” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the AUDI marks or to apply for or use any domain name incorporating the AUDI marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <saic-audi.com> in 2016, long after the AUDI marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s AUDI marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive (Annex 11 the Complaint).
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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 the website or location.
Upon the evidence of the circumstances in this case, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the AUDI marks with regard to its products and services. Complainant has registered its AUDI marks internationally (covering China) since 1996. And according to the Complaint, Audi-cars of Complainant are very popular in China, and deliveries of Audi-cars increased every year since 2007 (Annex 8 to the Complaint). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2016). The Panel therefore finds that the AUDI marks are not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.
Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
The disputed domain name is inactive. In terms of inactive domain name, the WIPO Overview 2.0 provides: “with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.” (paragraph 3.2., WIPO Overview 2.0).
The WIPO Overview 2.0 further states: “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
As discussed above, Complainant’s AUDI marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that inactive use of the disputed domain name <saic-audi.com> by Respondent does not prevent a finding of bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.
For all 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 <saic-audi.com> be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: April 13, 2017