a6.net

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Audi AG v. This Domain Name May Be For Sale Legend.name

Case No. D2006-1473

1. The Parties

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

The Respondent is This Domain Name May Be For Sale Legend.name, Kuala Lumpur, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <a6.net> is registered with Spot Domain LLC dba Domainsite.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2006. On November 17, 2006, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On November 21, 2006, Spot Domain LLC dba Domainsite.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 November 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2006. The Response was filed with the Center on November 28, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on January 12, 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 the owner of the trademark A6.

The Complainant is one of the world’s leading car-manufacturers. Cars of the Complainant are sold worldwide. The Complainant’s global Group turnover was more than 26,500 million Euros in 2005. The Complainant’s group employs approximately 52,000 employees. The Complainant produced approximately 811,000 cars in 2005. Extracts of the Complainant’s Annual Report 2005, asserting these figures, have been provided to the Panel.

Since 1994, the Complainant has manufactured the A6, a full-size luxury car / executive car. In the first six months of 2006, the Complainant sold 118,958 cars of the A6 type. In 2005, more than 200,000 automobiles of the A6 have been produced and delivered to customers worldwide. A printout of the Annual Report 2005 has been provided to the Panel.

The Complainant maintains a global network of partners and sales organizations for the distribution of its cars.

The Complainant is the owner of the following trademarks:

- International trademark A6 (word mark) No. 655864 under the Madrid Agreement and Protocol thereto, based on the German trademark No. 395 06 093, registered on May 30, 1996, for class 12 with the following designated contracting countries: AL, AM, AT, AZ, BA, BG, BX, CH, CU, DZ, ES, FR, HR, HU, IT, KP, LI, LR, LV, MA, MC, MD, MK, MN, PT, SD, SI, SK, SM, UA, VN, YU.

- International trademark AUDI A6 (word mark) No. 854531 under Madrid Agreement and Protocol thereto, based on the German trademark No. 304 65 126.5/12, registered on May 18, 1995, for classes 12, 18, 28 with the following designated contracting countries: BT, BY, CN, EG, IR, KE, KG, KP, KZ, LS, MZ, NA, RO, RU, SD, SL, SY, SZ, TJ, UZ, VN, YU, AG, AN, GE, IS, KR, SG, TM, ZM, SG

- US Trademark (word mark) No. 1.957.319 registered on February 20, 1996 for class 12

- Community trademark A6 (word mark) No. 18846 registered January 21, 1999, applied for April, 1, 1996, classes 12, 37

- German trademark A6 (word mark) No. 2913882, registered at the German Patent and Trademark Office on November 7, 1997, applied for on June 29, 1993, class 12.

- German trademark AUDI A6 (word mark) No. 30465126, registered at the German Patent and Trademark Office on December 14, 2004, applied for on November 16, 2004, classes 12, 18, 28

- German trademark A6 (word mark) No. 39506093, registered at the German Patent and Trademark Office on November 7, 1997, applied for on February 11, 1995, class 12.

Evidence of these trademark registrations have been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions none of which have been denied by the Respondent:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The disputed domain name <a6.net> is identical to the Complainant’s trademark. The disputed domain name comprises only two elements: the Complainant’s mark ‘A6’ and the generic top level domain ‘net’.

When judging semantic similarity, the TLD-indicator ‘net’ is not to be taken into consideration due to its mere descriptive function.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

It is the consensus view of hitherto existing panel decisions that the Complainant is only required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name (see 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

In Europay International S. A. v. Eurocard.com – eurocard.com/eurocard.org, WIPO Case No. D2000-0173, the Panel stated: “It is relatively difficult for any complainant to prove beyond a shadow of a doubt that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the Respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be light.”

The panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; summarized the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely, that once the complainant has asserted that the respondent has no rights or legitimate interest, the burden of proof shifts to the respondent.

In the present case, the Complainant contends, no legitimate interest is cognizable. Neither did the Respondent use, or demonstrably prepare 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; nor is the Respondent commonly known by the disputed domain name; nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

1) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and there are no signs for any preparation to do so.

At present, the domain name is used for an advertisement which promotes ‘domaining’ services by ‘legend.name’. Evidence of this has been produced to the Panel.

This corresponds to the entry for the Respondent in the whois data base: ‘This Domain Name May Be For Sale - Legend .name’. ‘Domaining’ is explained on the website as follows:

Domaining is the business of buying, selling, developing and monetizing domain names. Domain names are the addresses of the web and come in a wide variety of extensions (.com, .net, .org being the most common). Domainers, professionals who deal in domain names, buy, sell and develop domain names just like a real estate investor would, often generating income from domain names they own through domain parking and development or reselling.

Thus, the Complainant contends that the Respondent discloses its intention in regard to the registration of the disputed domain name; the Respondent aims to ‘monetize’ domain names by parking, developing and reselling them.

In the present case, the Complainant submits, no development of any legitimate use of the disputed domain name is observable at all. The disputed domain name is used to display the self advertisement for the Respondent’s business method and to display Google ads, clearly with the intention to gain profit from users, who were misled to the webpage and click on the Google ads. Google ads is a program run by Google, where website owners can enroll to enable advertisements on their websites, which are administered by Google and generate revenue on either a per-click or per-thousand-impressions basis.

The Respondent has registered at least one more domain name for the purpose of ‘monetizing’, namely ‘U6. com’. Evidence of this has been provided to the Panel.

2) The Respondent is not commonly known by the disputed domain name.

The Respondent seems to use the name ‘legend.name’ as its company name or business identifier.

There is no International, Community or US trademark ‘A6’ registered for the Respondent. A Google search for the term ‘A6’ shows no connection of this term with the Respondent among the first 20 results. Evidence of this has been provided to the Panel.

3) Under no circumstances whatsoever the Respondent’s use of the domain may be regarded as a legitimate noncommercial or fair use.

As already shown, the Complainant submits, the disputed domain name is used to mislead users that are expecting information about the Complainant’s A6 to a website that generates revenue by displaying banner advertisement and promotes the ‘monetizing’ of domain name parking. This is quite the contrary to a legitimate noncommercial or fair use.

A3. The domain name was registered and is being used in bad faith.

The facts/evidence that the domain name has been registered and is being used in bad faith are as follows:

1. The Respondent was aware of the trademarks of the Complainant when it registered the disputed domain name. The Complainant’s cars are famous worldwide. The A6 has been globally distributed for more than twelve years; hundreds of thousands of automobiles bear the trademark ‘A6’ all over the world. The A6 has been globally promoted for more than ten years in advertisements and on the Complainant’s home pages like ‘audi.com’, ‘audi.de’, ‘audi.fr’ or ‘audi.es’.

The registration of a domain name that is identical to a famous trademark without authorization is in itself evidence of bad faith (PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561; Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792).

2. The Respondent registered the disputed domain name in order to inadmissibly prevent the owner of the trademark from reflecting the mark in a corresponding domain name (Paragraph 4(b)(ii) of the Policy) with the purpose of exploiting the value of the Complainant´s famous trademark for its own advantage.

It is the Respondent’s outspoken intention to exploit the registration of the domain name for its financial advantage. The Respondent bluntly calls its business model ‘domaining’. By parking the domain name that matches the Complainant’s trademark, the Respondent prevents the Complainant from using its trademark in this manner.

Therefore, the Respondent also intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark (Paragraph 4 (b) (iv) of the Policy).

3. As specifically noted in the Policy, the circumstances of bad faith are not limited to the examples given in the Policy, see, for example, Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Canada v. eResolution.com, WIPO Case No. D2000-0110.

In the present case, the Respondent provides misleading information on its identity. The Respondent’s name is the database of the registrar (“This domain name may be for sale – legend name”). This is obviously not a correct name.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not file a response to the Complainant’s contentions or take any part in them.

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous WIPO UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a domain name wholly incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name wholly incorporates the Complainant’s trademark A6. The Panel agrees with the Complainant’s contentions that the Complainant has well-established rights in its trademark, which, based on the evidence and arguments adduced by the Complainant, the Panel accepts it is widely-known and enjoys a high reputation in its field of business in many parts of the world.

The fact that the Complainant’s mark A6 appears in the disputed domain name with a lower case ‘a’ is irrelevant and does not act as distinguishing feature for the purposes of comparison here.

Likewise, the addition of the suffix “.net”, which is required for registration purposes only, is also irrelevant and does not, therefore, serve to distinguish the disputed domain name from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name “pomellato”, is not relevant. And also Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered “Robohelp” trademark, and that the “addition of the suffix .com is not a distinguishing difference”. The same principle and rationale also apply to the addition of the suffix “.net”.

Thus, the use by the Respondent of the Complainant’s mark A6 in the disputed domain name will in all likelihood result in confusion amongst Internet users and potential consumers seeking information about the Complainant’s products and services.

In view of all this, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark A6, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely known trademark A6 as part of the disputed domain name. In any case, if the Respondent had any such rights or legitimate interests, the Respondent would have been expected to assert them; the Respondent has not done so and the Panel, therefore, must draw the corresponding inferences.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the widely known, substantial and successful global business being carried on by the Complainant. The domain name is used to display an advertisement for the Respondent’s business method of “domaining” (as described and defined above) and to display Google ads. Such conduct on the part of the Respondent can hardly be described as a bona fide offering of goods or services. Indeed, it has been held in a number of previous WIPO UDRP cases, including Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case No. D2000-0847, that “use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services.”

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name, on the contrary the Respondent appears to use the name ‘legend.name’ as its company name; nor would the Respondent appear to be making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is apparently using the disputed domain name for “domaining” purposes as defined above, which includes “monetizing” domain names. Again, such conduct on the part of the Respondent can hardly be described as being a legitimate non-commercial or fair use without intent for commercial gain.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is unfairly trading on the Complainant’s valuable goodwill established in its widely known trademark A6. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s considerable reputation and goodwill by free-riding on the A6 mark for the Respondent’s own purposes and benefits. Such conduct, in the view of the Panel, amounts to bad faith.

By registering and using the disputed domain name incorporating the Complainant’s A6 trademark, the Respondent is likely to mislead Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are in some way approved or endorsed by the Complainant, neither of which, according to the evidence before the Panel, is the situation in the present case.

Furthermore, the Panel agrees with the Complainant’s contentions that the Respondent’s use of the disputed domain name comprising the Complainant’s widely known trademark A6 for ‘domaining’ purposes (as defined above) prevents the Complainant from reflecting the trademark in a corresponding domain name, which is contrary to paragraph 4(b)(ii) of the Policy and an indication of bad faith.

The Panel notes that the Respondent appears to be obscuring its identity behind a name which suggests that the disputed domain name may be for sale, which also smacks of bad faith.

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is also a further indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <a6.net> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: January 25, 2006

ADDENDUM TO ADMINISTRATIVE PANEL DECISION

This is an Addendum to the Administrative Panel Decision (“Decision”) dated January 25, 2007 with regard to the domain name dispute between the parties involving the domain name .

Further Procedural History

On January 30, 2007, an unnamed person presumed to be the Respondent contacted the WIPO Arbitration and Mediation Center (“Center”) by email noting that the case record includes a reaction on November 28, 2006 from the Respondent. On the same day, the Center conveyed the message of January 30, 2007 to the Panel. When the Panel had reviewed the case record in preparing the Decision, it noted that the said reaction had been filed without providing particulars as to the sending party and without including the requisite certification under the Rules. Even so, in light of the presumed Respondent’s email query of January 30, 2007, the Panel for the avoidance of doubt now issues the present Addendum to the Decision.

Email of November 28, 2006

In the above-mentioned email of November 28, 2006, an unidentified individual (as discussed in the Decision), presumed to be or to correspond on behalf of the Respondent, contends in pertinent part:

The domain name was purchased “2 months ago” with the stated purpose of developing it as a “dual search site ‘A6 - Ace Search’”, without the Registrant being aware that “A6” referred to an Audi car model when the domain name was purchased.

The domain name was not developed or used to refer to any car products, but was only used to redirect to the Respondent’s personal website “www.legend.name”. The Respondent states that it acquires domain names primarily for development purposes “for myself and my clients”, while parking/redirecting them, and occasionally sells domain names identifying itself with the contact information "This Domain Name May Be For Sale". The domain name was bought “for thousands…as a dream project”. The communication further states that “if I plan to use it in bad faith, I can register "AudiA6.net" for just $7, which is still available to register”. It is contended that Respondent did not use or plan to use the domain name in bad faith, either to advertise car products or to damage Audi’s image.

It is further noted that “A6” is not only used for Audi car models, but that it is also a widely used character/acronym, such as for stationery products, international standards, and road infrastructure.

The availability of a possible finding of Reverse Domain Name Hijacking in relation to the disputed domain name was also noted.

Further Discussion and Findings

Expressly discussing these contentions for the avoidance of doubt, the Panel notes the absence of any demonstrable preparations for the stated intention to develop the domain name as a “dual search site” called “A6 – Ace Search”. The asserted examples of use of the term “A6” are of limited relevance as the domain name is not being used for this purpose and the record contains no indication of any such intention. The Respondent (as described in the Decision) uses the domain name to redirect users to its own website at which it displays advertisement for “domaining” and to display google ads. In the absence of indications to the contrary, the Panel has found it reasonable to assume that such use in this case aims to capitalise on the drawing power of the corresponding trademark. In the circumstances, the Respondent’s claim that it was unaware of such trademark rights is not convincing.

The Panel reiterates its finding that the Respondent has no rights or legitimate interests in the domain name, and that it was registered and is being used in bad faith. It also follows that there has been no need for the Decision to address the issue of Reverse Domain Name Hijacking.

Decision

The Panelist accordingly reaffirms the Decision in favor of the Complainant and reaffirms the requirement that the registration of the domain name be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: February 8, 2007