The Complainant is Audi AG of Ingolstadt, Germany represented by HK2 Rechtsanwälte, Germany.
The Respondent is Claus Linder of Fichtenau, Germany.
The disputed domain names <audibank.online> and <audizentrum.online> are respectively registered with PDR Ltd. d/b/a PublicDomainRegistry.com and NameCheap, Inc. (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2016. On August 3, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 4, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On August 5, 2016, the Complainant submitted an amendment to the Complaint.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2016. The Respondent submitted an informal communication in German on August 8, 2016. No formal response was submitted.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 1, 2016. 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.
The Complainant is one of the largest car manufacturers in the world, delivering more than one million Audi cars worldwide in 2015.
The Complainant is the owner of many trademark registrations for AUDI, including international registration no. 622242, registered on July 5, 1994, and AUDI-BANK, including European Union Trade Mark no. 000018812, registered on May 26, 1998, in a variety of countries and jurisdictions, including the European Union. The Complainant’s affiliated enterprise “Volkswagen Bank GmbH” offers financial services at the website “www.audibank.de”. The term “audizentrum” translates to “Audi Center.”
The disputed domain names were registered on March 24, 2016 and May 11, 2016, many years after the Complainant’s mark was registered. The Panel visited the disputed domain names on September 12, 2016, and observed that both sites are essentially blank, both displaying the same simple graphic and generic logo referring to “Intellectual Property Online”.
The Complainant states that each of the three elements of paragraph 4(a) of the Policy have been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain names are substantially identical to its registered AUDI mark, one adding only the suffix “zentrum,” and the other duplicating its AUDI-BANK trademark.
Concerning the second element of the Policy, the Complainant notes that the Respondent is not entitled to use the disputed domain names and has never been commonly known by the disputed domain names. The Complainant further notes that the Respondent does not hold any trademark or other right consisting in whole or in part in the denomination “Audi” and that AUDI is a famous trademark owned by the Complainant.
Finally, with regard to the third element of the Policy, the Complainant states that the Respondent registered the disputed domain names for the purpose of selling them to the Complainant. The Complainant further notes that the Respondent had initially offered to sell the disputed domain names to the Complainant in exchange for a new Audi R8 Coupé, and then apparently raised his offer to two new Audi R8 Coupés, plus two new Audi Q7 sport vehicles. The Complainant states that the Respondent’s offer to sell the disputed domain names constitutes evidence of bad faith registration and use under the Policy.
The Respondent sent an email message to the Center indicating, in effect, that he did not plan to participate in this proceeding. The message was sent in German; the language of this proceeding is English in accordance with paragraph 11(a) of the Rules. While the message could be entirely disregarded for this reason alone, both the Panel and the Complainant can read it. It does not contain any matter relevant to the issues before the Panel.
The Respondent was advised by the Center in both English and German that he was required to submit to a mandatory administrative proceeding in accordance with the terms of his registration agreement. The Respondent did not reply further. As the Respondent did not reply to the Complainant’s contentions, this matter will be decided based on the submissions and supporting evidence of the Complainant.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark AUDI as evidenced in the annexes to the Complaint.
The disputed domain names incorporate the Complainant’s trademarks in their entirety. The incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941.
The Panel finds that Internet users would interpret the addition of the term “zentrum” in the one of the disputed domain names as a reference to an Audi sales center. The Panel finds that the addition of a generic term such as “zentrum” is insufficient to distance the disputed domain name from the Complainant’s trademark: See PepsiCo, Inc v. Kieran McGarry, WIPO Case No. D2005-0629 and Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601.
The Panel further finds that the addition of generic Top-Level Domains (“gTLDs”) such as “.com” or “.online” may be disregarded when determining whether the disputed domain names are confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189.
The Panel thus finds that the disputed domain names <audizentrum.online> and <audibank.online> are confusingly similar to the Complainant’s AUDI marks and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. However, it is the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to produce any evidence to rebut the Complainant’s prima facie case, then the respondent may lack rights or legitimate interests in the disputed domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant confirms that it has not licensed or authorized the Respondent to use its AUDI mark in any fashion and that there is no connection between the Respondent and the Complainant. At the time the Panel visited the sites, the disputed domain names were used only in connection with a dormant site. The Complainant has established that the sites previously displayed “For Sale” content only. Neither a dormant site nor one for sale constitutes, by itself, a bona fide use or interest in the circumstances of this case.
The Respondent has failed to submit evidence of any rights or legitimate interests in the disputed domain names or reply to the Complainant’s contentions. The Panel finds that there is no evidence to suggest that the Respondent has any rights or legitimate interests in any trademarks or service marks which are identical, similar or related to the disputed domain names.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not provided any evidence of its rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Complainant has maintained registered rights in the AUDI mark throughout the world for many years. The Complainant has established that AUDI is a well-known trademark. The Respondent was undoubtedly aware of the Complainant’s trademark, as he specified in detail, including color and wheel type, the models of the Complainant’s vehicles he would like in exchange for the disputed domain name registrations. Therefore, in the Panel’s view, the Respondent was aware of the Complainant at the time he selected, without authorization, the disputed domain names for registration and did so in bad faith. Actual knowledge, by itself, is sufficient for a finding of bad faith.
In addition, the Respondent offered to sell the disputed domain names to the Complainant in exchange for between one and four new Audi vehicles, with a retail cost somewhere between USD 60,000 and 500,000. Previous UDRP panels have held that an offer to sell for in excess of out-of-pocket costs supports a finding of bad faith under paragraph 4(b)(i) of the Policy, as appears to be the case here.
Accordingly, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
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 names <audibank.online> and <audizentrum.online> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: September 15, 2016