WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Audi AG v. Jun Suk Min

Case No. D2007-0200

 

1. The Parties

The Complainant is Audi AG, Ingolstadt, Germany, represented by HK2 Rechtsanwälte, Germany.

The Respondent is Jun Suk Min, Inchon Inchon, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <audi-shop.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2007. On February 14, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On February 27, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2007.

The Center appointed Isabel Davies as the sole panelist in this matter on April 4, 2007. 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 Audi AG, the well-known automobile manufacturer. The Complainant is incorporated under the laws of the Federal Republic of Germany.

The Complainant’s cars are sold on a worldwide basis. According to the Complainant’s annual report (Annex No. 4 to the Complaint) the Complainant’s group turnover worldwide in 2005 exceeded EUR 26,500 million, manufacturing approximately 811,000 cars in the relevant period.

According to an Interbrand Survey in 2005, the AUDI trademark and brand was estimated to have a value of around US$3.6 billion (Annex No. 5 to the Complaint).

The Complainant has provided details of an extensive portfolio of national and international trademarks comprising the term Audi. The Complainant’s portfolio includes several registrations for the mark AUDI registered under the Madrid Agreement and Protocol thereto, as summarized below (Annexure Nos. 6-8 to the Complaint):

Mark

International Class (es)

Registration No

Registration Date

Designated Country

AUDI

36

622241

July 5, 1997

AT, BA, BG, BX, BY, CH, CN, CU, CZ, DZ, EG, ES, FR, HR, HU, IR, IT, KP, KR, KZ, LI, MA, MC, MK, MN, PL, PT, RO, RU, SD, SI, SK, SM, SY, UA, UZ, VN, YU.

AUDI

2 7 8 9 12 14 16 18 20 21 25 26 27 28 37

11238176

March 12,1999

AL, AM, AT, AZ, BA, BG, BX, BY, CH, CN, CU, CZ, DZ, EG, ES, FR, HR, HU, IR, IT, KG, KP, KR, KZ, LI, LR, LV, MA, MC, MD, MK, MN, PL, PT, RO, RU, SD, SG, SI, SK, SM, SY, TJ, UA, UZ, VN, YU

2 7 8 9 12 14 16 18 20 21 25 26 27 28 37

657259

February 10, 1996

AM, AT, BA, BG, BX, BY, CH, CN, CU, CZ, DZ, EG, ES, FR, HR, HU, IR, IT, KG, KP, KR, KZ, LI, LV, MA, MC, MD, MK, MN, PL, PT, RO, RU, SD, SI, SK, SM, SY, TJ, UA, UZ, VN, YU

In addition, the Complainant owns a number of other trademarks, including European Community Trademarks and United States Trademark registrations for the word mark AUDI and AUDI and device marks (Annexure Nos. 9-28 to the Complaint). Many (but not all) of these trademarks were registered prior to the registration of the domain name.

The validity of the Complainant’s trademark registrations for the mark AUDI has not been contested by the Respondent and the Panel accepts that the Complainant is the holder of a valid trademark registration for AUDI in the various countries listed. The Complainant has also pointed out that international trademark numbers 622241 and 716147, 657259 and 879638 are all designated to the Republic of Korea (KR), the country of the Respondent’s residence, although the latter of these four marks post-dates the registration of the domain name.

The Complainant and other affiliated companies and authorised dealers operate websites under domain names which incorporate the AUDI trademarks, such as <audi.de>, <audi-shop.de>, <audi.ch> and <audi.com>.

The domain name in dispute is registered with OnlineNic.

According to the Registrar’s WHOIS database, the registrant of the domain name <audi-shop.com> is Jun Suk Min. The domain name was registered on January 14, 2002.

The website offered at the domain name displays the details of a global domain name market place provider, SEDO. The site offers sponsored links to various third party websites. The Complainant states that the Respondent uses the domain name at issue to offer links to third party websites, some of which offer automobiles not manufactured by the Complainant.

 

5. Parties’ Contentions

A. Complainant

Confusingly similar domain name

The Complainant contends that the Respondent’s domain name is confusingly similar to the Complainant’s trademark. The Complainant contends that the domain name consists of merely a second level domain incorporating the mark AUDI and the word “shop” separated by a dash/hyphen.

The Complainant states that the descriptive term “shop” does not render the domain different or distinctive from the trademark AUDI. Accordingly, the word “shop” should not be taken into consideration when judging semantic similarity. The Complainant also contends that the word shop may give the impression to Internet users that the domain name and website at issue are associated with official Internet sales departments of the Complainant.

No rights or legitimate interest

The Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has referred to previous decisions in UDRP proceedings that have affirmed that AUDI is a well-known trademark and that the mark is both distinctive and famous.

The Complainant maintains that the sponsored links to various websites of third parties is prima facie evidence that the disputed domain name is used by the Respondent to gain profit by the display of sponsored links, which is not a legitimate right or interest under the Policy. In particular, the links are obviously selected according to the distinctive part of the domain name in order to generate click through revenue for the Respondent. The Respondent is accordingly using the Complainant’s trademark to exploit it for financial gain relating to directed Internet traffic.

The Complainant states that the click through links listed on the domain name at the time of the complaint (Annex No. 33 to the Complaint) include a link to the site “www.ridesafely.com”, an international car seller. No cars offered on the website provided at Annex No. 33 to the Complaint include cars manufactured by the Complainant. The Complainant maintains that such links are so-called “bait and switch” tactics and are not a legitimate use of the site.

The Complainant also asserts that they are not aware of any relevant trademark or trademark application for the term “Audi” or similar from the Respondent, and that the Respondent’s name and contact details do not support a genuine connection to any rights in the disputed domain name.

The Complainant contends that the Respondent does not appear to have made demonstrable preparations for the use of the domain name in connection with a bona fide offering of goods before notice of the dispute, and that the Respondent is not commonly known by Audi or Audi Shop, such that no commercial or fair use of the domain name by the Respondent is available in the present case.

Registration and Use in Bad Faith

The Complainant asserts that the Respondent has registered and has used the disputed domain name in bad faith. The Complainant contends that the Respondent was aware of the trademarks of the Complainant when the Respondent registered the domain name, since AUDI is a world famous mark, including in the Republic of Korea. Accordingly, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, creating a likelihood of confusion with the Complainant’s mark to source, sponsorship, affiliation or endorsement of the website.

In the alternative, the Complainant contends that the Respondent knew or should have known of the Complainant’s registration and use of the trademarks prior to registering the domain name. The Complainant asserts that mere passive holding of the domain name can be regarded as bad faith use since no possible use in good faith can be conceived.

The Complainant also states that the Respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, with a purpose of exploiting the value of the Complainant’s famous trademark for its own advantage and that the Respondent is engaged in domain name trafficking. The Complainant refers to several domain names that have been offered for sale or misused or used for spamming, or use for the exploitation of famous marks, particularly through pay per click advertising (Annexure Nos. 34-38 to the Complaint).

The Complainant states that the Respondent has apparently been involved in two previous UDRP proceedings in both of which the transfer of the domain name was ordered; see: Rhino Entertainment Company v. Suk Min Jun, BG.com, WIPO Case No. D2006-0948 and WK Wohnen GmbH & Co EIN Richtungs KG v. Suk Min Jun - designo Kuechen.com, WIPO Case No. D2002-1109.

Finally, the Complainant states that the Respondent has used various different names for registration data to forge its true identity, including Jun Suk Min, David Jun, Lee Bung Ran, Suk Min Jun (Appendix No. 39 to the Complaint).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts that the Complainant holds valid trademark registrations for the mark AUDI in a number of countries worldwide. The disputed domain name consists of a word identical to the mark, accompanied by a non-distinctive suffix, “shop”. In addition, the word “shop” may also indicate a connection with or authorisation from, the Complainant, which may also cause confusion.

The Complainant has satisfied the Panel that the domain name is confusingly similar to the trademark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

B. Rights or Legitimate Interests

The Complainant has clearly made out a prima facie case under this matter. The Respondent has produced no evidence of preparations for the use of the domain name in connection with a bona fide offering of goods or services before notice of the dispute. The Respondent is not commonly known by Audi or Audi Shop, nor does it appear from the identity of the Respondent that this would be likely. Absent any authorisation to deal in the Complainant’s goods, the Respondent has not demonstrated any commercial or fair use of the domain. The Respondent has, by failing to respond, shown no rights or legitimate interest in respect of the domain name <audi-shop.com>.

Accordingly, the Panel finds the Respondent lacks rights or a legitimate interest in the domain name (paragraph 4(b)(ii) of the Policy).

C. Registered and Used in Bad Faith

The Respondent’s registration of the domain name <audi-shop.com> is several years after the registration of many (but not all) of the Complainant’s trademark registrations. As a result of the Complainant’s reputation, the Panel finds that the Respondent knew, or should have known of the Complainant’s prior adoption and usage of the mark and that the domain name was registered in bad faith.

The Panel accepts the Complainant’s contention that domain name is used in such a way as to exploit the reputation of the Complainant, in particular by providing links selected according to the distinctive part of the domain name in order to generate click through revenue for the Respondent. One of these links in particular, “www.ridesafely.com”, offers automobiles for sale which are not manufactured by the Complainant. The Respondent is accordingly using the Complainant’s trademark to exploit it for financial gain relating to directed Internet traffic.

The Panel is satisfied that the Respondent has intentionally registered the domain name to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site (paragraph 4(b)(iv) of Policy).

The Complainant also raised arguments to demonstrate bad faith in relation to domain name trafficking, the misuse and exploitation of other famous marks, and the apparent steps taken by the Respondent to conceal its true identity. In light of the finding of bad faith registration and use above, it is not necessary to consider these matters further.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <audi-shop.com>, be transferred to the Complainant.

Isabel Davies
Sole Panelist

Dated: April 18, 2007