The Complainant is Audi AG of Ingolstadt, Germany, represented by Rechtsanwaltskanzlei Nüsslein, Sättler & Kollegen, Germany.
The Respondent is noorinet of Gyeongju-si, Gyeongsangbuk-do, Republic of Korea.
The disputed domain name <audimobile.com> is registered with Megazone Corp., dba HOSTING.KR (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2014. On November 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2014, 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 Complainant filed an amendment to the Complaint on November 13, 2014.
Also on November 11, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On November 13, 2014, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2014.
The Center appointed Moonchul Chang as the sole panelist in this matter on December 31, 2014. 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 Audi AG, a German corporation which conducts global business of manufacturing and selling cars under the trademark AUDI. The Complainant owns national and international trademark registrations for its AUDI mark, including in the Republic of Korea.
As a result of the Complainant's promotion of its trademark worldwide through websites, tv-spots and by sponsoring sports-clubs or events, AUDI is well-known around the world with strong reputation. The Complainant has various domain names including the AUDI trademarks such as <audi.de>, <audi.com>, <audi.us>, <audi-mobile.de>, <audi-mobile.com>, and <audi.mobile>.
According to the publicly available WhoIs information, the disputed domain name <audimobile.com> was registered on August 29, 2014.
The Complainant contends that:
(1) The disputed domain name <audimobile.com> is confusingly similar to the Complainant's trademark AUDI. It incorporates the Complainant's AUDI mark in entirety with the addition of a word "mobile" which does not sufficiently distinguish the disputed domain name from the trademark. "Audi" is the dominant feature of the disputed domain name, causing confusing similarity to the Complainant's trademark
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name actively for noncommercial use or in connection with a bona fide offering of goods or services.
(3) The disputed domain name was registered and is being used by the Respondent in bad faith. Firstly, the Respondent offered to sell the disputed domain name to the Complainant the day after registration. Secondly, the Respondent registered the disputed domain name with actual or presumable knowledge of the Complainant's rights in the AUDI mark. Thirdly, there is no conceivable legitimate interest in the use of the disputed domain name by the Respondent.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel determines otherwise. In this present case, the Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean.
The Complaint was submitted in English. The Center immediately notified the parties, in both Korean and English, of the procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding in English. However, the Respondent did not respond to the Center's notification, and then defaulted.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties' level of comfort with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11(a) of the Rules, that English shall be the language of the administrative proceeding in this case.
The disputed domain name <audimobile.com> is comprised of two words: "audi" and "mobile". The generic Top-Level Domain (gTLD) suffix ".com" can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653). The dominant feature of the disputed domain name is "audi" which is entirely identical to the trademark AUDI and the word "mobile" is a generic term and only a descriptive suffix. Numerous UDRP panels held that where a domain name substantially incorporates a complainant's trademark, this is sufficient to make the domain name "confusingly similar" within the meaning of the Policy. (See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678).
Accordingly, the Panel finds thatthe first element under paragraph 4(a) of the Policy has been met by the Complainant.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent. (See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In this present case, the Respondent has owned the disputed domain name but has never apparently used it.
Secondly, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name "has been registered and is being used in bad faith". As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the Complainant's trademark AUDI is internationally well-known and the disputed domain name entirely incorporates the AUDI mark, in this Panel's view it is highly unlikely that the Respondent failed to notice the presence of the trademark in the disputed domain name at the time of the registration.
Secondly, the Respondent previously registered the domain name <audiexperience.com> which the UDRP panel ordered to be transferred to the Complainant in Audi AG v. Nurinet, WIPO Case No. D2012-2260. (In Korean language, both Nurinet and Noorinet are referred to the same person or entity). There is also a history of prior bad faith findings in the cases involving the Respondent such as LEGO Juris A/S v. Noorinet, WIPO Case No. D2010-1705; Kshocolat Ltd v. Nurinet, WIPO Case No. D2010-0577; Key Relocation Center AB v. Nurinet, WIPO Case No. D2013-1885; Microsoft Corporation and Skype v. Nurinet (Noorinet), WIPO Case No. D2012-0536. Having considered the Respondent's registration of multiple confusingly similar domain names to well-known trademarks, the Panel finds that these registrations constitute a pattern of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
Thirdly, the Complainant contends that the Respondent offered to sell the disputed domain name to it using an email address with an alias name. It is highly presumable that the disputed domain name was registered primarily for the purpose of selling the disputed domain name to the Complainant to gain economic benefit.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name in accordance with paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
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 name <audimobile.com> be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Date: January 20, 2015