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AUDI AG v. Emir Ulu [2005] GENDND 2099 (21 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AUDI AG v. Emir Ulu

Case No. D2005-1030

1. The Parties

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

The Respondent is Emir Ulu, Kayseri, Turkey.

2. The Domain Names and Registrar

The disputed domain names <audi-händler.com>, <audi-münchen.com>, <audi-zubehör.com> and <audizubehör.com> are registered with PSI-USA, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On October 3, 2005, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain names at issue. On October 5, 2005, PSI-USA, Inc. 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 October 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2005.

The Respondent sent the Center an e-mail on November 10, 2005, asking for a German translation of the Notification of Respondent Default since the Respondent could not understand English. The Center replied to the above e-mail on November 11, 2005, pointing out that pursuant to Rules, paragraph 11 the language of the proceeding shall be the Language of the registration agreement and that in this case the language of the registration agreement was English.

The Center appointed Alessandra Ferreri as the Sole Panelist in this matter on December 7, 2005. 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 AUDI Aktiengesellschaft, commonly known as AUDI, one of the most important car manufacturers of the world.

The Complainant is the owner of a broad range of trademark registrations worldwide consisting of or including the word AUDI. Said trademarks are used for several and different kinds of goods and services and are registered in many different classes in Europe and internationally through World Intellectual Property Organization.

The Complainant submitted evidence of valid trademark registrations in Germany and in Turkey.

Complainant or affiliated companies or authorized dealers run various websites under domain names including the AUDI trademarks, such as <audi.de>, <audi.com>, <myaudi.de>, <audi.ch>, <audi.it>. In Turkey Complainant runs the website “www.audi.com.tr”.

The Respondent registered the domain names <audi-händler.com>, <audi-münchen.com>, <audi-zubehör.com> and <audizubehör.com> on May 18, 2004.

Complainant submitted evidence that in September 2005 the above domain names were offered for sale or for rent on the website “www.domain-welt.com” to which they were linked.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the trademarks AUDI are of strong reputation, because the Complainant as well as its products are well known all over the world.

The Complainant states that:

The domain names at issue are confusingly similar to the trademarks “AUDI” and the trademark AUDI ORIGINAL ZUBEHÖR held by the Complainant.

The Respondent has no rights or legitimate interests in respect of the Domain Name:

Respondent is engaging in the business of domainbroking; he is the owner of the website “www.domain–velt.com” through which numerous domain names, corresponding to third parties’ renowned trademarks, are offered for sale or rent; no other business or activity is carried out by Respondent through the domain names at issue.

Respondent was involved in another administrative proceeding initiated by Volkswagen to which Respondent has offered to sale the domain name <vw-service.com>, twice.

The Respondent misleadingly diverts customers to his website for commercial gain.

The Respondent offers the Domain Names for sale publicly.

The Respondent has no rights in the trademark AUDI and he is not commonly known as “Audi”, “Audi Zubehör”, “Audi München”, “Audi Händler” or any other name comprising “Audi”.

Respondent has already been involved in a prior administrative proceeding in Rotkäppchen Sektkellerei GmbH v. Emir Ulu, WIPO Case No. D2005-0374.

The domain names are registered and are being used in bad faith.

The Respondent intentionally attempts to attract for commercial gain Internet users to the websites “www.audi-händler.com,” “www.audi-münchen.com,” “www.audi-zubehör.com” and “www.audizubehör.com” by creating a likelihood of confusion with the Complainant’s trademark.

The Respondent acquired the domain names for the purpose of selling them to the Complainant or its competitors.

Respondent has lost in another administrative proceeding before, he is party in a current administrative proceeding and holds other domain names infringing trademarks of others for sale.

Respondent must have been aware of the Complainant’s trademarks when he registered the domain names.

The use of Complainant’s entire trademarks in domain names evidences bad faith.

Respondent provides incomplete or wrong contact details.

The Complainant requests the Panel to order a transfer of the domain names from the Respondent to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and should therefore be considered in default. The Panel, in compliance with paragraph 14 of the Rules, shall proceed to a decision on the Complaint and shall draw such inferences therefrom, as it considers appropriate.

6. Discussion and Findings

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Panel notes that the parties have not agreed to use German in these proceedings. The disputed domain names are registered with PSI-USA, Inc., which confirmed that the registration agreement used for each disputed domain name was in the English language. The Respondent is an individual residing in Turkey. The Panel notes that the Respondent submitted a German email communication¹ to the Center only after the Notification of Respondent Default. The Respondent did not otherwise participate to these proceedings. The Panel finds, in the circumstances of this case, no reason to alter the language of the proceeding and determines that the language of these proceedings is English.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

A. Identical or Confusingly Similar

The domain names <audi-händler.com>, <audi-münchen.com>, <audi-zubehör.com> and <audizubehör.com> incorporate Complainant’s trademark AUDI in its entirety; the last two above mentioned domain names incorporate also the Complainant’s German trademark AUDI ORIGINAL ZUBEHÖR.

The Complainant’s trademark AUDI is to be considered a strong, distinctive and famous mark, on the basis of its worldwide reputation and goodwill in connection with the car manufacture.

The addition of the generic terms “händler” (which is the German word for “retailer”) and “zubehör” (which is the German word for accessory) – which both give association to Complainant’s business activity and products – or the addition of the geographical indicator “München” (that is the German word for “Münich”) to a well- known trademark (as the AUDI trademark is) is not enough to prevent a confusing similarity between the domain names and said trademark. (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055, GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987, for the addition of a geographical indicator see Rolls-Royce Plc v. Hallofpain, WIPO Case No. D2000-1709, PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865).

With regards to the suffix .com (which indicates that the domain names are registered in the .com gTLD), as it was established in many previous decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400 and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447) the specific top level of the domain name such as “.org”, “.net”, or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

Thus, the Panel finds that the domain names <audi-händler.com>, <audi-münchen.com>, <audi-zubehör.com> and <audizubehör.com> are confusingly similar to Complainant’s trademark. The Complainant, therefore, has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that as a result of the default Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the domain name, such as:

(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute, or

(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

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

There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain names.

The Complainant states that there is (and there was) no relationship between the Complainant or any of its subsidiaries and the Respondent. The Respondent is not a licensee of the Complainant and no permission or consent has been granted to the Respondent to use the trademark AUDI or to apply for any domain name incorporating these trademarks.

No response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference “that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore the Panel is satisfied that the second condition is met.

C. Registered and Used in Bad Faith

The Panel finds that the domain names were registered and are being used in bad faith.

Complainant’s trademark and activity are very well known throughout the word and considering the widespread use and fame of AUDI trademark the Respondent must have been aware of it when he registered the domain names at issue.

As the Respondent has no rights or interests in this trademark, in line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith.

Concerning use of the domain names, the Complainant produced some web page printouts which demonstrate that in September 2005, the domain names here in consideration automatically resolved to the “www.domain-welt.com” website announcing that said domain names are for sale or lease. Through said website, owned by the Respondent, more than 4,000 domain names, many of which reflect third parties international and German trademarks are offered for lease or sale. In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s trademark, to another online location by creating a likelihood of confusion with the Complainant’s trademarks. In this way the Respondent seeks to promote the activity carried out by him through the “www.domain-welt.com” website, consisting in selling and leasing domain names. Moreover by exploiting the renown of domain names reflecting the well-known AUDI trademark, the Respondent seeks to gain profit out of the domain names by providing sponsored links on the corresponding websites.

Furthermore, the Respondent obviously acquired the domain names in dispute for the purpose of selling the name, as the above domain names were offered for sale to the general public. The Panel considers the above mentioned circumstances indicate bad faith.

In addition, the Panel finds the Respondent’s bad faith also demonstrated by the provision of false information about Respondent’s address provided to the Registrar. As asserted by the Complainant incorrect details provided by the Respondent and the delivery of the cover containing the papers and the documents of the present case to the Respondent by courier were not possible because of the incorrect or non existent Respondent’s Turkish address.

In many prior UDRP decisions, it is established that the use of false contact information is an indication that the Respondent registered the domain name in bad faith (See Chanel v. 1, WIPO Case No. D2003-0218; Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Home Director, Inc. v. Home Director, WIPO Case No. D2000-0111).

Finally, the Panel notes that in the decision rendered in Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987, the panel decided that the disputed domain name, <vw-service.com> be transferred to the complainant.

In light of all the above circumstances, the Panel is satisfied that the third condition is met and that the domain names <audi-händler.com>, <audi-münchen.com>, <audi-zubehör.com> and <audizubehör.com> were registered and are using in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

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 names <audi-händler.com>, <audi-münchen.com>, <audi-zubehör.com> and <audizubehör.com> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist

Dated: December 21, 2005

¹ Referred to in Section 3 above.