WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG, Lamborghini Holding S.p.A., Volkswagen AG, Bentley Motors Limited, Bugatti International S.A. and Dr. Ing. h.c. F. Porsche AG v. Andrew Vilcauskas
Case No. D2015-1397
1. The Parties
The Complainants are Audi AG of Ingolstadt, Germany, Lamborghini Holding S.p.A. of Sant’Agata Bolognese, Italy, Volkswagen AG of Wolfsburg, Germany, Bentley Motors Limited of Chehsire, United Kingdom of Great Britain and Northern Ireland, Bugatti International S.A. of Luxembourg, Luxembourg and Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by HK2 Rechtsanwälte, Germany.
The Respondent is Andrew Vilcauskas of Tualatin, Oregon, United States of America.
2. The Domain Names and Registrar
The disputed domain names <iheartaudi.com>, <iheartbentley.com>, <iheartbugatti.com>, <iheartlamborghini.com>, <iheartporsche.com> and <iheartvw.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2015. On August 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 8, 2015, 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 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 the Respondent of the Complaint, and the proceedings commenced on August 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on September 17, 2015. 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 Complainants are a group of related entities that belong to the same company group, the Volkswagen group. Volkswagen AG is the parent company of Audi AG, Bentley Motors Ltd, Bugatti International and Porsche AG, Audi AG is Lamborghini’s parent company.
The Complainants are world famous car manufacturers. The Complainants’ trademarks are all well known and of strong reputation. The Complainants’ cars are available and sold worldwide.
Each one of the Complainants is a trademark holder of the following trademarks:
Audi AG trademark – AUDI;
Bentley Motors Limited trademark – BENTLEY;
Bugatti International S.A. trademark – BUGATTI;
Lamborghini S.p.A., trademark – LAMBORGHINI;
Volkswagen AG trademark Volkswagen and VW;
Dr. Ing. h.c. F. Porsche AG trademark PORSCHE.
See respectively annex 6, 8, 10, 12, 14 and 15 of the Complaint.
All the disputed domain names were created on April 29, 2010 and registered to the Respondent since at least April 29, 2015.
5. Parties’ Contentions
A. Complainant
The Complainants request the consolidation of the Complaint because it is their understating that it is legitimate to proceed in a single proceeding since all Complainants belong to the same company group, all disputed domain names include trademarks that belong to each of the Complainants and the same Respondent registered the disputed domain names on the same day.
The Complainants further add that this is admissible as mentioned in paragraph 1.8 and 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP questions, Second Edition (“WIPO Overview 2.0”) and previous consolidations that have been accepted such as Automobili Lamborghini Holding S.p.A., Audi AG, Volkswagen AG v. Joey Walt, globebizImports, Groupo Gold, WIPO Case No. D2011-1269, Volkswagen AG, Dr. Ing. h.c. F. Porsche AG and Automobili Lamborghini S.p.A. v. Kazim Uslu,
WIPO Case No. D2015- 0119 and Volkswagen AG, Bentley Motors Limited, Automobili Lamborghini S.p.A. v. Dzianis Zakharenka,
WIPO Case No. D2015- 0347 among others.
The Complainants indicate that the disputed domain names are confusingly similar with the Complainants’ trademarks. Each one of the disputed domain names incorporates the Complainants trademarks. The addition of the term “iheart” is clearly a descriptive term that does not avoid a finding of confusing similarity.
The Complainants further indicate that there is no indication of the Respondent’s use of or demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services.
The Complainants also assert that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not known by any of the disputed domain names, nor is the Respondent making a noncommercial or fair use of the disputed domain names, since three of the disputed domain names display sponsored links thus generating pay-per-click (“PPC”) revenues and the other three display a notice indicating that they are under construction.
The Complainants assert that the Respondent has engaged in a pattern of conduct as indicated under paragraph 4(b)(ii) of the UDRP since it has registered numerous domain names similar to famous and well known trademarks owned by third parties (see annex 19 of the Complaint).
The Complainants finally state that the disputed domain names have been registered primarily for the purpose of selling the disputed domain names, and that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Consequently, in view of the above-mentioned circumstances, the Complainants assert that it is established that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and is using the disputed domain names in bad faith.
The Complainants request that the Panel order the transfer of the disputed domain names to the Complainants.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Preliminary Issue: Consolidation
The Panel has noted the Complainants’ request to bring a consolidated Complaint and approves the consolidation based on the arguments provided and noting that the Respondent did not object.
Paragraph 4(a) of the Policy stipulates that the Complainants must prove the following three elements in order to be successful in their action:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have been able to demonstrate that they have rights to the trademarks AUDI, BENTLEY, BUGATTI, LAMBORGHINI, VOLKSWAGEN and PORSCHE.
The disputed domain names consist of the above-mentioned trademarks, with the addition of the generic term “iheart”. As indicated by the Complainants, previous UDRP panels have found that the mere addition of a descriptive term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.
Furthermore, the inclusion of a subsidiary word to the dominant feature of a trademark does not serve to avoid confusion for purposes of the UDRP’s first element threshold requirement or a risk of confusion among Internet users.
For the above-cited reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainants’ trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainants must prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd. ,WIPO Case No. D2003-0455; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited,
WIPO Case No. D2000-0704).
The Panel agrees that the Complainants need only to make out a prima facie case and finds that it has met that standard. The Panel will consider the arguments of the Complainants that the Respondent did not have any registered trademarks or service marks corresponding to the disputed domain names. That the Respondent is not commonly known by any of the Complainants’ trademarks AUDI, BENTLEY, BUGATTI, LAMBORGHINI, VOLKSWAGEN and PORSCHE, and that the Respondent is not in any way affiliated with the Complainants, nor authorized or licensed to use the these trademarks, nor authorized to seek registration of any domain name incorporating said trademarks.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, but intentionally misleadingly consumers to its websites for commercial gain. The Panel has reviewed the evidence provided by the Complainants and can conclude that the Respondent was not making a legitimate use of the disputed domain names since three of the websites contained sponsored links and pay-per-click advertising links which redirected the users to sites selling competitors’ products and used car websites (see annex 17 of the Complaint).
Furthermore, there is no evidence that the Respondent is using or preparing to use the disputed domain names with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel was also able to conclude with the evidence offered by the Complainants that the other three websites did not resolve to any active website, but websites with the notice “website in kürze verfügbar” which loosely means website under construction in English.
Consequently, the Panel finds that the Complainants have satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainants must prove that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain names in bad faith.
The Panel considers that the Complainants have submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain names with the knowledge of the Complainants’ rights in the Complainants’ trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainants’ trademarks at the time of the registration of the disputed domain names.
As mentioned by the Complainants, it is unlikely that the Respondent was unaware of the Complainants when it registered the disputed domain names, since the Complainants own numerous trademarks that are famous and well-known throughout the world; therefore, in the Panel’s assessment, it is unlikely to conclude that the Respondent did not have these trademarks in mind when registering the disputed domain names, specially given the fame and notoriety of these trademarks and all belonging to the Volkswagen Group.
In addition to the above, the Panel accepts the arguments of the Complainants that the disputed domain names were registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent uses the disputed domain name to direct Internet users to a website which contains a list of PPC hyperlinks to car related sites and furthermore, it displays links to direct competitors of the Complainant. These PPC links are likely to generate revenues. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainants’ trademark to generate profits.
With regard to the three disputed domain names which are currently under construction, the Panel agrees with the Complainants’ contentions that lack of any conceivable plausible actual or contemplated active use can be considered as bad faith evidence (see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
Finally the Panel cannot ignore the un-solicited pre-commencement communication sent by the Respondent to the Complainant Automobili Lamborghini S.p.A indicating “[…] I think this domain is worth a substantial amount of money but I am also a realist whi is working very hard to launch a new technology business based on several patents that I have. I would respectfully ak you to make a fair and generous offer if you’re interested. An offer including a Lamborgini vehicle would be a dream come true […]” See annex 18 of the Complaint). This clearly cannot be considered an out-of-pocket cost related to the disputed domain name, allowing this Panel to conclude that the Respondent has registered the disputed domain names primarily for the purpose of selling them to the owner of the trademarks.
For the above-cited reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
7. Decision
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,
<iheartaudi.com> be transferred to Audi AG;
<iheartbentley.com> be transferred to Bentley Motors Limited;
<iheartbugatti.com> be transferred to Bugatti International S.A;
<iheartlamborghini.com>, be transferred to Lamborghini Holding S.p.A;
<iheartporsche.com> be transferred to Dr. Ing. h.c. F. Porsche AG; and
<iheartvw.com> be transferred to Volkswagen AG.
Andrea Dawson
Sole Panelist
Date: September 24, 2015
