Decisión del Panel Administrativo nº D2015-0827 of WIPO Arbitration and Mediation Center, July 09, 2015 (case Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd.)

Resolution DateJuly 09, 2015
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionTransfer
DominioGeneric Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd.

Case No. D2015-0827

1. The Parties

The Complainants are Audi AG of Ingolstadt, Germany; Automobili Lamborghini Holding S.p.A., of Sant'Agata Bolognese, Italy; Skoda Auto a.s. of Boleslav, Czech Republic; and Volkswagen AG of Wolfsburg, Germany, all collectively represented by HK2 Rechtsanwälte, Germany.

The Respondent is JUS TIN Pty Ltd. of Brisbane, Australia, represented by Woods Prince Lawyers, Australia.

2. The Domain Names and Registrar

The disputed domain names are [audi.social], [lamborghini.social], [skoda.social] and [volkswagen.social], all of which are registered with Crazy Domains FZ-LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for all the names 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 that the proceedings commenced on May 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was set to June 11, 2015. The Response was timely filed with the Center on June 10, 2015.

The Center appointed Peter L. Michaelson as the sole panelist in this matter on June 19, 2015. 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.

Though the decision was due from the Panel to the Center on July 3, 2015, owing to extraordinary circumstances, the Panel extended this date to July 10, 2015.

4. Factual Background

As reflected in the registration records for the disputed domain names in the WhoIs database (a copy of the records appears in Annex 2 to the Complaint), the disputed domain names [audi.social], [lamborghini.social], [skoda.social] and [volkswagen.social] were all registered on September 2, 2014.

A. The Complainants’ Marks

As indicated in the Complaint, each of the four Complainants owns numerous trademark registrations, in various countries throughout the world including Australia, for its corresponding word mark AUDI, LAMBORGHINI, SKODA or VOLKSWAGEN. The Complainants have collectively provided, in Annexes 6, 8, 9, 11, and 13 to the Complaint, copies of entries from publicly available trademark databases for some of their respective registrations. Details of an illustrative registration of each of these four marks are as follows:

  1. AUDI (block letters)

    Australian registration No.: 760032

    Registration date: April 20, 1998

    This mark is registered for use in connection with: “soaps, perfumery, essential oils, cosmetics” in international classes 3, “automobiles and parts thereof” in international class 12; “jewellery, horological and chronometric instruments” in international class 14; “printed matter, stationery” in international class 16; “goods made of leather and imitations of leather, trunks and travelling bags, umbrellas and parasols” in international class 18; “clothing, footwear, headgear” in international class 25; “games and playthings, gymnastic and sporting articles” in international class 28; and “repair and maintenance of motor vehicles” in international class 37.

  2. LAMBORGHINI (block letters)

    International registration: 959504 (designating Australia, among other countries)

    Registration date: February 28, 2008

    This mark is registered for use in connection with: “vehicles and parts thereof” in international class 12; and “model cars” in international class 28.

  3. SKODA (block letters)

    International registration: 991107 (designating Australia, among other countries)

    Registration date: October 15, 2008

    This mark is registered for use in connection with: “Automobiles with the exception of passenger cars; trailers, their parts, accessories, fit-out and components, auxiliary frames, combustion engines except engines for passenger cars” in international class 12; “Marketing, promotional, advertising, publicity and selling services” in international class 35; and “Financial and insurance services, services of renting and hire-purchase financing, all in connection with automobiles and trailers” in international class 36.

  4. VOLKSWAGEN (block letters)

    Australian registration No.: 767985

    Registration date: July 20, 1998

    This mark is registered for use in connection with a rather extensive delineation of goods and services - which for the sake of brevity will not be repeated here but include, among others, certain goods and services related to motor vehicles - spanning international classes 2, 3, 4, 7, 9, 12, 14, 16, 18, 25, 27, 28, 34, 36, 36, 37, 39, 41 and 42.

    B. The Complainants

    As noted in paragraph A(1) of the Complaint, all four Complainants belong to the same company group, the Volkswagen Group. Complainant Volkswagen AG (“Volkswagen”), is the parent company of Complainants Audi AG (“Audi”) and Skoda Auto a.s. (“Skoda”). Audi is the parent company of Complainant Lamborghini Holding S.p.A. (“Lamborghini”). Skoda is a Czech corporation. The Volkswagen group is one of the world’s largest automobile manufacturers with total sales in 2014 exceeding 10 Million vehicles across its various brands with operating revenues of approximately EUR 12,697 million, and, in terms of the passenger car market, approximately 25.1% market share in Western Europe and 13.3% in Asia-Pacific.

    In 2014, Complainant Audi had worldwide deliveries of Audi-branded cars of approximately 1.74 million vehicles. Audi produces a range of automobiles spanning compact cars like the A1 to sports cars like the Audi R8 or SUVs like the Q7 which are produced globally, e.g. in Germany, India and China. Audi promotes its marks worldwide through websites, television spots and as a sponsor of sport-clubs and events. It, its affiliated companies and authorized dealers run various websites under domain names including the mark AUDI, including, e.g., [audi.de], [audi.com], [audi.us], [audi.cn], [myaudi.de], [audi.ch], [audi.it], [audi-shop.de] or [audi.in]. A website for Audi’s Australian market is found at “www.audi.com.au”.

    Complainant Lamborghini manufactures high performance sports cars. Lamborghini was founded in 1963 by Ferruccio Lamborghini as Automobili Ferruccio Lamborghini. Since 1998 Lamborghini has been a wholly owned subsidiary of Complainant Audi. Lamborghini promotes its branded cars on the Internet at [lamborghini.com].

    Complainant Skoda, dating back to 1895, is one of the oldest car manufacturers in the world. Since 1991 it is also now part of the Volkswagen Group. Skoda is experiencing constant growth, having produced over a million vehicles in 2014. It serves all countries worldwide with exception of North America. Skoda is active in Australia and promotes its cars through, among other modalities, its website at “www.skoda.com.au”.

    Lastly, Complainant Volkswagen is itself one of the world’s largest automobile manufacturers and has been for several decades with its 2014 sales amounting to over 4.5 million vehicles.

    C. The Respondent and its use of the names

    The Respondent, in the name of Justin Trivett, is a second-generation car dealer. He worked with his father until the latter’s passing in 1998 at which time their business was the largest prestige car dealer in Australia with dealerships in Sydney, Brisbane and Perth. Since 1999, the Respondent has conducted and continues to conduct its business under the name “Trivett Prestige Services”. In late 2006, Complainant Audi appointed the Respondent as one of its authorized franchised dealers. That dealership commenced operation during October 2007 but later ceased operation on December 31, 2014 as a result of Audi not having renewed the franchise. See paragraphs 3-7 of the declaration of Justin Trivett appearing in Annex 1 to the Response (“Trivett Declaration”).

    To date, all the disputed domain names resolve to what appear to be parking pages at the Registrar - as evidenced, in Annex 14 to the Complaint, by screen shots of the pages associated with these names. The Respondent acknowledges this in paragraphs 12 and 14 of the Trivett Declaration.

    Though the Respondent has not yet established an operational website to which any of the disputed domain names resolve, it is apparently developing business plans - though these efforts are still in their “start-up” stages - to exploit these names to accomplish either of two purposes:

    1. to develop a proposal to car manufacturers (including the Complainants) where the Respondent will “develop, manage and maximize the benefit” of these .social sites, in conjunction with these manufacturers, to enhance their brands’ online marketing presence, perform search engine optimization services and assist in strategically managing internet traffic to their domains. The Respondent believes that car manufacturers are “not necessarily fully conversant in the digital marketplace” as indicated by the Complainants’ prior failure to register the disputed domain names during the .social Sunrise and Landrush phases.

      (b) alternatively, to develop an online forum for the benefit of social groups, such as car enthusiasts, clubs...

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