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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett
Case No. D2008-1053
1. The Parties
The Complainants are Audi AG, of Ingolstadt, Germany, and Volkswagen Group of America, Inc., Herndon, Virginia, United States of America, represented by Howard, Phillips & Andersen, United States of America.
The Respondent is Sandlot LLC, Jim Gossett, Solana Beach, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <auditulsa.com> and <tulsaaudi.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 14, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On July 14, 2008, GoDaddy.com, Inc. 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”), 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 July 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2008.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on August 28, 2008. 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
Complainants Audi AG and Volkswagen Group of America, Inc. are subsidiaries of Volkswagen AG. Volkswagen Group of America holds the exclusive license to use and enforce the trademarks of Audi AG in the United States of America (“United States”).
Audi is one of the most successful premium automobile companies in the world. Its revenues for the years 2006 and 2007 were €31,142 million and €33,167 million, respectively. Audi has spent many millions of dollars and has expended significant effort in advertising, promoting, and developing the AUDI marks throughout the world. The AUDI mark, which has been in use in connection with automobiles since 1925, has been recognized as famous and distinctive.1
Of the 964,151 AUDI automobiles sold in 2007, over 93,000 were sold in the United States. AUDI branded automobiles are sold through a network of licensed Audi dealers which are referred to by names comprised of “Audi” and the city in which the dealership is located. In addition, Audi maintains a network of websites advertising and promoting these dealerships, again using a pattern of combining “Audi” with the name of the city in which the dealership is located.
Audi owns United States Trademark Registration No. 708,352 for the mark AUDI, which issued in 1960, and has obtained many other registrations for AUDI and marks that incorporate AUDI. See Complaint, Exhibits D and E. For example, Audi owns trademark registrations for the AUDI mark in the European Union and Madrid system countries. See Complaint, Exhibit F and G.
The disputed domain names were registered by Respondent on May 14, 2006.2 The domain names were used in connection with commercial websites advertising new and used automobiles and related goods and services for sale in direct competition with Audi and its licensed dealers. According to Complainants, Respondent designed the websites to appear as if the sites were those of an Audi dealer, copying the typeface and layout of websites operated by Audi dealers. See Complaint, Exhibits H, I, and J. Complainants indicate that Respondent appears to be the co-founder of a company that specializes in registering “geo-targeted domain names” and leasing such names to local businesses. See Complaint, Exhibit N.
Audi discovered Respondent’s registrations of the domain names in issue in March 2008, as Audi prepared to open a dealership in Tulsa, Oklahoma. On March 31, 2008, Audi’s counsel sent a demand letter to Respondent, via Domains by Proxy, Inc., setting forth Audi’s objections to the registration and use of the domain names. See Complaint, Exhibits K and L. A similar letter was sent to Respondents on April 15, 2008. See Complaint, Exhibit M. While Respondent did not respond to such letters, it did cease use of the domain names to host websites.
5. Parties’ Contentions
Complainants assert that the domain names in issue are confusingly similar to a mark in which it has rights. It notes that the domain names, <auditulsa.com> and <tulsaaudi.com>, incorporate Audi’s AUDI mark in its entirety, adding only the geographic modifier “Tulsa.” Complainants contend that, under such circumstances, in assessing confusing similarity between the mark and domain names, the geographic modifier is to be omitted and the domain name is to be treated as if it consisted of the mark alone.
Complainants further maintain that Respondent should be treated as having no legitimate rights in the domain names because Respondent is not known by the disputed domain names, has not been authorized by Audi to use the AUDI marks in any connection, and has never made any bona fide use of the domain names.
Finally, Complainants argue that the domain names were registered and are being used in bad faith. Complainants assert that Respondent’s registration of the domain names, in view of the recognized strength and fame of the AUDI mark, alone establishes bad faith. The fact that Respondent used the domain names to host websites displaying ads for AUDI automobiles demonstrates Respondent’s awareness of Complainant Audi and is further evidence of bad faith, Complainants declare. Complainants also contend that “Respondent’s use of the Disputed Domain Names to host websites offering automobiles and related goods and services for sale in direct competition with Audi and its licensed dealers conclusively demonstrates Respondent’s bad faith.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant Audi, through its registrations and longstanding use of the AUDI mark, has rights in such mark.
The Panel further holds that the disputed domain names, <auditulsa.com> and <tulsaaudi.com>, are confusingly similar to the AUDI mark. As Complainants note, the disputed names incorporate the AUDI mark in its entirety, adding the geographic modifier “Tulsa.” The addition of such a descriptive term is not sufficient to avoid a finding of confusing similarity, particularly in view of evidence that AUDI dealerships incorporate the name of the city in which it is located in its name. See, e.g. Volkswagen AG v. MapleOne Solutions,
WIPO Case No. D2003-0326 (June 16, 2003) (transferring <guelphvw.com> to Volkswagen); Rolls-Royce PLC v. Hallofpain,
WIPO Case No. D2000-1709 (February 19, 2001) (transferring <rollsroycecanada.com> and <rollsroycecanada.net> to Rolls-Royce.)
B. Rights or Legitimate Interests
The Panel concludes that Complainants have sustained their burden of proving that Respondent does not have rights or legitimate interests in the disputed domain names. As contended by Complainants, the Panel finds that the respondent used the disputed domain names to host commercial websites in order to advertise automobiles and related goods and services for sale in direct competition with Audi and its dealers. Such infringing use of the AUDI mark does not give rise to a legitimate right or interest. See, e.g., AutoNation, Inc. v. Paul Schaefer,
WIPO Case No. D2001-0289 (April 24, 2001) (“Because Mr. Schaefer’s use of the domain name <autonation-direct.com> is an infringing use of AutoNation’s service marks, Mr. Schaefer cannot have established any legitimate interest in the Disputed Domain Name.”)
C. Registered and Used in Bad Faith
The evidence establishes that Respondent used the disputed domain names in connection with sites that offered goods and services competitive with those offered by Audi and its dealers, that such sites imitated in some respects those maintained by Audi’s dealers, and that such domain names are confusingly similar to the AUDI mark. The Panel, therefore, finds that Respondent, by using the domain names in dispute, intentionally attempted to attract, for commercial gain, Internet users to its sites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such sites or of the products or services on such sites, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that paragraph 4(b)(iv) of the Policy may be applied in this case even though Respondent no longer uses the domain name. The relevant paragraph uses the phrase “by using the domain name.” Such phrase, in the view of the Panel, may and should be interpreted to encompass a situation, such as presented in this case, where a respondent used the domain name in a manner to give rise to a likelihood of confusion but later discontinued such use.
There is other evidence in this case to support a finding of bad faith registration and use. Such additional evidence includes: (1) the fame and longstanding use of the AUDI mark; (2) Respondent’s use of sites that imitated in some respects those of Audi dealers; (3) Respondent’s failure to respond to Complainant’s cease and desist letters; and (4) Respondent’s failure to file a Response. See, e.g., Playboy Enters. Int’l, Inc. v. Tamara Pitts,
WIPO Case No. D2006-0675 (August 3, 2006) (“The Panel agrees with the Complainant that the Respondent’s registration of a Domain Name incorporating a very famous mark of which she was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith.”).
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 <auditulsa.com> and <tulsaaudi.com> be transferred to the Complainant.
Jeffrey M. Samuels
Date: September 3, 2008
1 See, e.g., Audi AG v. D’Amato, 381 F. Supp. 2d 644 (E.D. Mich. 2005).
2 While Domains by Proxy, Inc. is the registrant of record, Domains by Proxy advised Complainants that the named Respondent is the true and beneficial owner of the disputed domain names. See Complaint, Exhibits A and C.