URS DEFAULT DETERMINATION
AUDI AG v. City-Garage AG
Claim Number: FA1707001740744
DOMAIN NAME
<audi.auto>
PARTIES
| Complainant: AUDI AG of Ingolstadt, Germany | |
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Complainant Representative: HK2 Rechtsanwälte
Philip Koch of Berlin, Germany
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| Respondent: City-Garage AG Monika Hofer of St.Gallen, II, CH | |
REGISTRIES and REGISTRARS
| Registries: AUTO Registry | |
| Registrars: united-domains AG |
EXAMINER
| The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
| Ms. Kateryna Oliinyk, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: July 20, 2017 | |
| Commencement: July 21, 2017 | |
| Default Date: August 8, 2017 | |
| Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear and convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. Under URS 6.1. if at the expiration of the 14 Calendar Day Response period (or extended period if granted), the Registrant does not submit an answer, the Complaint proceeds to Default. Further URS 6.3. reads that all Default cases proceed to Examination for review on the merits of the claim. Complainant is a world-famous car manufacturer. The Complainant is the owner of numerous trademarks “AUDI”, e. g. SwissTrademark 2P423396, Community Trademarks 000018812 and 009930751, all in particular registered and used for cars and parts thereof included in International Class 12. The trademark “AUDI” is famous and of strong reputation (see WIPO Case No. D2013-1728). Respondent registered the domain name <audi.auto> on April 19, 2017 soon after the Complainant sent the termination of an authorised partner contact with effect of June 30, 2017. Complainant has never granted Respondent the right to use of the trademark in the domain name. The domain name <audi.auto> redirects internet users to the Respondent’s website <city-garage.ch> where Respondent also offers cars of Complainant’s competitors like Porsche, Hyundai and Seat. The Respondent is known under the trade name The City Garage. Respondent does not disclose its relationship with Complainant, thus does not dispel the notion that the domain name and the website are operated by Complainant or with its consent. |
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Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name <audi.auto> fully incorporates the registered word mark AUDI protected under various trademark registrations and which is currently in use. It is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus .auto does not preclude confusion with the registered mark. On the contrary, the new gTLD .auto directly refers to the Complainant’s core sector of business, which fact intensifies the misleading similarity between the domain name and the registered mark. Respectively, the Examiner finds that the contested domain name is confusingly similar with the Complainant’s “AUDI” mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Examiner determines that the Respondent is not commonly known by the “AUDI” name. The Respondent is known under the trade name The City Garage instead. Regardless some contractual relationship between the Complainant and Respondent (which terminated on June 30, 2017), the Respondent has never been granted the right to use the Complainant mark in the domain name. The disputed domain name was registered soon after the notice of the contract termination was sent by the Complainant to the Respondent and now redirects users to the to the Respondent’s website <city-garage.ch> where Respondent also offers cars of Complainant’s competitors. Such commercial use of the domain name <audi.auto> cannot be qualified as the legitimate fair use as this time Respondent takes undue reputational advantage of the Complainant’s well-known mark. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. By visiting the site, customers will most likely expect to reach the website searching for the Complainant's products or services. The Respondent who has never been granted the right to use the “AUDI” mark is using the confusion in the minds of consumers over the use of the “AUDI” mark to divert users to the own website insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. Thus, the Examiner founds the actionable initial interest confusion in this case. Yet the more, the Respondent, inasmuch as it has not been proved the contrary, as the former contractor of the Complainant, has the constructive knowledge of the trademark. Thus, the Examiner finds the contested domain name to be misleading that supports finding of bad faith registration under URS 1.2.6.3.(d). FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for
the duration of the registration:
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Ms. Kateryna Oliinyk Examiner
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