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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG v Hans Wolf
Case No. D 2001-0148
1. The Parties
The Complainant is Audi AG, D 85045 Ingolstadt, represented by Dr. Andrea Jaeger-Lenz, Gaedertz Rechtsanwälte, Warburgstr. 50, D 20354 Hamburg, Germany.
The Respondent is Hans Wolf, Gutenbergstr.1, D 19061 Schwerin, Germany.
2. The Domain Name and Registrar:
The Domain Name at issue is <audi-lamborghini.com>. The Registrar is Tucows, Inc, 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada
3. Procedural History:
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on January 26, 2001, and a hardcopy was received by the Center on January 30, 2001. The Center acknowledged the receipt of the Complaint on January 31, 2001.
On January 31, 2001, the Center sent to Tucows, Inc. a request for verification of registration data. On February 2, 2001, Tucows, Inc. confirmed to be the Registrar, that Hans Wolf is the Registrant of the domain name <audi-lamborghini.com>, and that the domain name registration <audi-lamborghini.com > is "currently on hold".
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On February 5, 2001, the Complaint was properly notified in accordance with the Rules, by post and by E-mail, using the E-mail address "email@example.com", indicated by the Respondent to the Registrar, and additionally using the address "firstname.lastname@example.org". Consequently, the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent. Therefore, the administrative proceedings commenced. Since no communication was received from the Respondent within the time limit set, the Center sent a default notification to the Complainant, on February 27, 2001.
On March 8, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is March 23, 2001.
4. Factual Background
The Complainant is the world famous car manufacturing company Audi AG, which has distributed vehicles in Germany and all over the world for decades. It was founded in 1884 and is registered in the commercial register under the name Audi AG since 1985. The Claimant owns trademark registrations for the trademark AUDI in many countries, including Germany, the United States and Canada and, in the European Union. The German registrations of the trademark AUDI, No 1123876 of 24, 08, 1988 and No 1138696 of 26.04.1989, cover a wide range of goods and services, including classes 12, 2, 7, 8, 9, 14, 16, 18, 20, 21, 25, 26, 27, 28, 36, 37.
In July 1998, the Complainant acquired the famous Italian sports car manufacturer Automobile Lamborghini S.p.A., in whose name the trademark LAMBORGHINI is registered by international registrations with protection in Germany and many other countries, including the USA and Canada. The Lamborghini subsidiary has been distributing exclusive sports cars for decades under its trademark LAMBOFGHINI. The Lamborghini subsidiary entitled the Complainant to base the complaint on its trademark LAMBORGHINI.
These facts are all evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.
The Complainant submits that the trademarks AUDI and LAMBORGHINI are famous marks and the Panelist is, based on his own knowledge, also personally convinced that the trademarks AUDI and LAMBORGHINI are internationally well-known marks.
The Complainant administers an informative website under the domain name <www.audi.com>. with links to Complainant's national websites.
On December 12, 2000, the Complainant sent to the Respondent a cease and desist letter, using the address indicated by the Respondent when he registered the domain name with Tucows.com. Inc, and asking him to transfer the domain name <audi-lamborghini.com> to the Complainant. However, the Complainant received a response from a German publisher, Zeitungsverlag Schwerin GmbH & Co KG, located at this address, who confirmed that the respondent did not have any address there and that he was not employed by the publisher (as evidenced in Annex 14).
The Respondent registered on November 6, 2000, the domain name <audi-lamborghini.com>. with Tucows, Inc. The domain name has apparently not been activated by the Respondent, since the URL http.//www.audi.lamborghini.com could not be retrieved. The post address, indicated by the Respondent when registering the domain name, is apparently wrong. Therefore it is not known, at which address the Respondent can be reached. Also the E-mail address email@example.com showed a permanent fatal error, when the Center tried to notify the Complaint to the Respondent, as evidenced by the documents which are transmitted to the Panelist.
5. Parties’ Contentions
Complainant submits that (1) the domain name < audi-lamborghini.com > is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent has failed to submit any statement. It has therefore not contested the allegations of the Complaint. Since the addresses given by the Respondent are apparently wrong, it is not possible to establish the identity of the Respondent.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name <audi-lamborghini.com> consists of a combination of the Complainant's housemark AUDI with the trademark LAMBORGHINI of the Complainant's subsidiary, and the generic tld indicator "com", which cannot be taken into consideration when judging confusing similarity. It is therefore identical with these two trademarks, on which the Complaint is based. Furthermore, the term "audi" in the domain name will be understood as a reference to the Complainant, because that term stands at the beginning of the combination of these two well-known marks. Even if an Internet user does not know that Lamborghini is owned by the Complainant, he is likely to understand the addition of LAMBORGHINI as a reference to some relationship ore association between the respective companies, which are the owners of the respective trademarks. Internet users, who are aware that Automobile Lamborghini S.p.A is a subsidiary of the Complainant, will even more connect the domain name with the Complainant's business. They may even believe that the Claimant has renamed his business into Audi-Lamborghini. Consequently, the domain name <audi-lamborghini> is confusingly similar with the trademark AUDI of the Complainant. At the same conclusion arrived the Panelist in the case No D2000-1761 Saab Automobile AB v Joakim Nordberg, confirming similarity of the domain name <saabopel> with the trademarks SAAB and OPEL.
2) Legitimate rights or interests in respect of the domain name
The terms "audi" and "lamborghini" are not a descriptive words, in which the Respondent might have an interest. "Audi" is a fantasy name, which is exclusively used and known worldwide to identify the products of the Complainant. Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use (commercially or non-commercially) the domain name and he has not submitted to have an intention to use it in the near future. Clearly, he has not been commonly known by the domain name. Also, he did not submit any circumstances that might show a legitimate interest in the domain name.
Therefore, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name <audi-lamborghini.com>.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
The Respondent has not attempted to sell the domain name to the Complainant and does not actively use it. The question is therefore, whether the passive holding of the domain name can be considered to be registration and use in bad faith, taking into account all circumstances of the present case.
In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows (case No. D2000-0003), that inaction of the Respondent is within the concept of 4a(iii) of the Policy.
(i) Registration in bad faith
As in the Telstra case, the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and that communication is not possible for the Claimant. As a consequence the Claimant was unable to commence legal proceedings in Germany against the Respondent based on trademark infringement, as the Claimant apparently successfully did in comparable cases of the registration of the domain names <audi-lamborghini.net> and <audi-lamborghini.org>.
Also, the Respondent cannot have ignored the fact that AUID is a registered and protected trademark of the Complainant. This can be deducted from the following facts:
The Respondent has indicated an address in Germany. Even if this address was wrong, it can be assumed from this indication that the Respondent, who bears a typical German name, is a resident of Germany, where the Complainant has its headquarters and where the trademark AUDI enjoys a particular high degree of knowledge, not only amongst car users, but amongst the general public at large.
Furthermore, the Respondent is likely to have had knowledge of the Claimant's acquisition of the Lamborghini company; otherwise he could not reasonably have had the idea to register a domain name, which is combining the well-known trademark AUDI of the Complainant with the well-known trademark LAMBORGHINI. The Respondent is therefore likely to have expected or hoped that the Complainant might in the future create the combination of the two marks as, e.g., a domain name, or as a trade name.
These findings, with the findings under section 6(2) that the Respondent has no rights or interests in the domain name, leads the Panelist to the conclusion that the domain name <audi-lamborghini.com> has been registered in bad faith.
(ii) Use in bad faith
For the Complainant to succeed, he also has to prove that the Respondent is using the domain name in bad faith.
The Administrative Panel in the Telstra case (paragraphs 7.8 to 7.10) has convincingly argued that the provisions of the Uniform Policy in Paragraph 4(b) support the assumption that inaction is within the concept of a domain name being used in bad faith. It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.
The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b) (I) - (iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.
The Panelist considers that the following circumstances justify such conclusion:
- The Complainant's trademark AUDI and the trademark LAMBORGHINI of its subsidiary are internationally well-known marks and the trademark AUDI enjoys a particularly strong reputation in Germany where the Respondent must be assumed to be located.
- The Respondent has made no use at all of its domain name and has submitted no evidence whatsoever of any good faith use of the domain name <audi-lamborghini>.
- The Respondent has taken active steps to hide its true identity by indicating a wrong address and by indicating an E-mail address which at least as from February 5, 2001 was not accessible.
- The Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement with the Registrar.
- The E-mail address given by the Respondent, which originally may have been an access to the Respondent, even if this was not the case when the Arbitration Center tried to notify the Complaint to the Respondent, is rather peculiar under two aspects: The term "choicedomains" indicates an address where domain names are available to be chosen (and normally for sale); also, the E-mail address refers to a server located in Russia, and not in Germany to which the - wrong - business address indicated by the Respondent refers. This E-mail address therefore gives some indication that the Respondent has registered the domain name <audi-lamborghini.com> with the intention to offer it for sale, if not to the Complainant, to other persons. Even if this indication alone is not strong enough to support an application of paragraph 4(b)(i) of the Policy, it is a factor to be considered, together with the other factors as mentioned before, as an active choice of the Respondent.
- Taking into account all these considerations together, it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of Complainant's well-known mark or an act of unfair competition and infringement of consumer protection legislation.
In light of these particular circumstances, the Panelist concludes that the Respondent's passive holding of the domain name <audi-lamborghini.com> satisfies the requirement of paragraph 4(a) of the Policy that the domain name is being used in bad faith by the Respondent.
In conclusion the Administrative Panel is satisfied that the domain name <audi-lamborghini.com> has been registered and is being used in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name <audi-lamborghini.com > be transferred to the Complainant.
Dr. Gerd F. Kunze
Date: March 15, 2001