WIPO: ‘click-through’ site "volkswagen-audi.com" registered in bad faith

The WIPO arbitration panel has ruled that the domain name "volkswagen-audi.com" had been used and registered in bad faith and ordered that the domain be transferred to its legitimate owner, Volkswagen AG.

The Complainant is a leading manufacturers of automobiles, whose products have been globally marketed under the trade mark VOLKSWAGEN for at least six decades. The Complainant also owns the subsidiary Audi AG, as well as numerous trade mark registrations worldwide for the mark “Audi” in various permutations. The Respondent, Zigoumis, Constantine of Canada, operates a portal site under the domain name "volkswagen-audi.com". Latter mentioned site includes links to further websites, some offering bona fide Audi products, but most linking to websites of unrelated third parties, some of which are in direct competition with the Complainant.

Michael J. Spence acting as sole panelist, found that the disputed domain name was confusingly similar to the Complainant’s trade mark as required by paragraph 4(a) of the Policy citing ...

"... the decisions of the panels in Société des Products Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118 and Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 that a domain name consisting exclusively of the trade mark of a Complainant and the trade mark of a subsidiary of that Complainant is prima facie identical or confusingly similar."

The sole panelist further found that Respondent lacked any rights or interests in the disputed domain name, stating that...

"[it] is for the Complainant to establish, at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

However, in this case the only conceivable legitimate interest that the Respondent could have in the use of the domain name would be if it were using the domain name to advertise the availability of bona fide Volkswagen and Audi products sold under the Complainant’s marks. The Complainant concedes that some of the links contained on the Respondent’s websites are to sites selling bona fide Audi products. The conditions upon which use to promote the resale of a Complainant’s products gives rise to a legitimate interest in the domain name have been strictly defined by the panels in decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. Few if any of the conditions described in those decisions have been met by the Respondent in this case. Moreover, those decisions dealt only with the situation in which the use was by the reseller itself and not by a third party operating a ‘click-through’ or portal site."

Consequently the panel found that the Complainant had established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. On the point of "bad faith" the sole Panelist ruled that the Complainant had also established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name:

"The apparent purpose of the Respondent’s use of the disputed name is to divert traffic to its site, and from there to the third party sites to which it is linked. Panel decisions such as L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc., WIPO Case No. D2005-0623 and F. Hoffmann-La Roche v. Register in hostingfreeweb.com, WIPO Case No. D2007-0391, establish that the use of a Complainant’s mark to operate a ‘click-through’ or portal site for profit is a classic example of bad faith. Given the reputation and distinctiveness of the Complainant’s trade mark, and noting also that the Respondent has made no apparent attempt to contact the Complainant or answer the Complaint, it is difficult to interpret the Complainant’s use of the disputed name other than as an attempt to profit by the deliberate diversion of Internet users."

Therefore the WIPO Panel concluded that the disputed domain had been registered and used in bad faith. As such and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist ordered that the domain name "volkswagen-audi.com" had to be transferred to the Complainant.

Case reference: Volkswagen AG v. Zigoumis, Constantine, Case No. D2008-0755 of 13 July 2008.

Class 46: the Uniform Domain Name Dispute Resolution Policy can be found here.

Posted by: Birgit Clark @ 00.07
Tags: audi, Domain names, volkswagen, WIPO Arbitration and Mediation Center,
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