WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Volkswagen Group of America, Inc. v. Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd

Case No. D2017-1508

1. The Parties

The Complainant is Volkswagen Group of America, Inc. of Herndon, Virginia, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States of America.

The Respondent is Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Chitre, Panama.

2. The Domain Name and Registrar

The disputed domain name <audisf.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2017. On August 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 10, 2017.

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 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2017.

The Center appointed Mihaela Maravela as the sole panelist in this matter on September 15, 2017. 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 Volkswagen Group of America, Inc., an American corporation, with its primary place of business in Virginia, United States. The Complainant is a subsidiary of Volkswagen AG, a German corporation. Audi AG is a majority owned subsidiary of Volkswagen AG, and is also a German corporation. Audi of America, Inc. is a division within the Complainant. The Complainant contends it is the exclusive importer of cars manufactured by Volkswagen AG and Audi AG in the U.S., and according to the Complainant it is responsible for protecting their trademarks in the U.S.¹

Audi obtained its first United States registration for the trademark AUDI (Reg. No. 708,352) in 1960 and has acquired many additional registrations for AUDI and trademarks that incorporate AUDI since then (“the Audi Marks”). The Complaint is based on a number of these trademark registrations.

The Respondent registered the disputed domain name on November 24, 2006. In the fall of 2016 the Complainant learned that the disputed domain was being auctioned by an online domain name reselling service. The Complainant contacted the mentioned service and received a response that the owner of the domain is willing to sell the same at a price of USD 9,999.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name “audisf.com” is confusingly similar to the Audi Marks and functionally identical to AUDI trademark which the Complainant has used continuously in commerce for over fifty years. The Complainant contends that the first part of the domain is functionally identical to the Complainant’s trademark AUDI, adding only the geographic qualifier “SF,” being interpreted as the initials for “San Francisco”.

The Complainant argues that as far as it has been able to determine, the only use the Respondent has made of the disputed domain name is to direct Internet traffic to a parked website displaying advertisements for Audi’s direct and indirect competitors and advertise the domain name for sale.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has not been authorized by the Complainant to use the Audi trademarks in any way, has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name.

The Complainant contends that given the strength and fame of the AUDI trademarks, the Respondent’s bad faith is established by the registration of the disputed domain name alone. Further, the Complainant argues that the Respondent’s bad faith is demonstrated by the fact that it uses the disputed domain name to display pay-per-click advertisements targeted toward the disputed domain name’s trademarked meaning. In addition, the Respondent’s actions in advertising the disputed domain name for sale for USD 9,999 constitute evidence of bad faith. Further, the Complainant contends that the Respondent’s use of a proxy service is yet another factor indicating bad faith, given the Respondent’s failure to respond to the Complainant’s cease-and-desist letter.

In the amended Complaint the Complainant further argued that since the registrant has received notice of the Complainant’s rights in the disputed domain name, the domain has undergone a series of systematic transfers between several affiliated entities which amounts to forceful evidence of bad faith registration.

B. Respondent

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

6. Discussion and Findings

Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

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

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Here, the Complainant is not the registered owner of the relevant trademarks upon which the Complaint is based. The trademarks are registered by its affiliates. However, the Complainant contends that it is the exclusive importer of automobiles manufactured by Audi AG and is responsible for enforcing Audi’s trademarks in the United States, arguing that it is a qualified Complainant based on section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted no evidence to support this assertion which this Panel finds would be preferable, but the Panel will consider the assertion as to the grant of its right to file the Complaint as true as the Complainant certified that the information contained in the Complaint is complete and accurate and the Respondent did not contest these assertions . See for a similar finding Volkswagen Group of America, Inc. v. Kim Hyeonsuk a.k.a. Kim H. Suk, Domain Bar, Young N. and Kang M.N., WIPO Case No. D2014-1596.

The Complainant proved trademark rights over AUDI (registered under number 708,352 in 1960) and other subsequent registrations for AUDI or trademarks incorporating AUDI.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.

Numerous UDRP panels have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617). As held in previous decisions, “As to the incorporation of the additional letters “sf” in the disputed domain name, the Panel agrees that it fails to distinguish the disputed domain name from Complainant’s mark. The SAP mark is clearly identifiable within the disputed domain name and the Panel considers that the addition of the common letters ‘sf’ at the end of ‘sap’ in the disputed domain name to be ‘insufficient to prevent threshold Internet user confusion’” (see SAP AG v. wwww wwww, WIPO Case No. D2014-0935). See also section 1.8 of the WIPO Overview 3.0.

It is well accepted by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations 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; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it holds rights over the trademark AUDI, and claims that the Complainant has not licensed or otherwise authorized the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “audi”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

According to the evidence put forward by the Complainant, the disputed domain name was used to direct Internet traffic to a parked website displaying advertisements for Audi’s direct and indirect competitors and advertise the disputed domain name for sale. This does not represent bona fide offering of goods or services or a legitimate noncommercial or fair use that would demonstrate rights to and legitimate interests in the disputed domain name as required by the Policy (section 2.9 of the WIPO Overview 3.0).

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The fact that the disputed domain name is confusingly similar with the Audi Marks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that he registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.

The Complainant’s AUDI trademark, included in the disputed domain name, has been used in commerce for more than 50 years prior to the registration of the disputed domain name, such that it is unlikely that the Respondent was unaware of the Complainant’s rights when he registered the disputed domain name. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062. The long standing use and fame of the AUDI trademark was acknowledged by previous UDRP panels (Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, WIPO Case No. D2008-1053; AUDI AG v. Emir Ulu, WIPO Case No. D2005-1030).

The Respondent provided no explanations for why he registered the disputed domain name.

Moreover, the Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the disputed domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.

From the evidence put forward by the Complainant it results that the disputed domain name was used to redirect Internet traffic to a website displaying pay-per-click advertisements for Audi’s direct and indirect competitors. Given the similarity between the AUDI trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of AUDI cars or dealership. See Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org and Kim Bum LLC, WIPO Case No. D2013-0181.

Also, from the record it results that the Respondent offered to sell the disputed domain name for an amount in excess of registration costs. The Panel considers that the disputed domain name was registered and is being used in bad faith by the Respondent as per paragraph 4(b)(i) of the Policy, for the purpose of “transferring the domain names to the complainant […], for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name”. See for similar findings Aktiebolaget Electrolux v. Li Bing Yu, WIPO Case No. D2012-1106; ENDEMOL Entertainment UK Plc v Guido SCHERPENHUYZEN, WIPO Case No. DTV2001-0023; Groupe Mutuel v. Al Perkins, WIPO Case No. D2013-1606.

Furthermore the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. (Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357). It also seems that the disputed domain name has undergone a series of transfers since the Complaint was submitted and after the Respondent received notice of the Complaint. This Panel agrees that “systematic transfer of the domain name to different registrants following the initial domain name registrant’s receipt of notice of the complaint in order to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced respecting the domain name under the Policy or elsewhere”, which seems to be the case here, stands as evidence of bad faith registration (Compass Group USA, Inc. v. Baltic Collagen Corp., Jonathan Ledger, Emerging Markets Corp., WIPO Case No. DCO2011-0028).

In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name.

Consequently, the Panel ascertains that the disputed domain name was registered and is being used in bad faith.

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 name <audisf.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: October 3, 2017

¹ In this Decision, "Complainant" and "Audi" refer to these entities in combination.