A one person UDRP panel just ruled against Audi AG of Germany on the domain name audicity.com
The case seemed to turn on the fact that the domain name was “registered for over 10 years, and there is no evidence that the Respondent has ever attempted to sell the Domain Name”.
“Furthermore, when asked by the Complainant to transfer the Domain Name, the Respondent refused without making a counter-offer, citing the costs that the transfer would impose on him in changing his various email addresses.”
The domain holder didn’t file a formal response but sent the panel some info:
“”The Respondent registered the Domain Name because it is a play on the words “audacity” and “audio”. ”
“He did not think of the Complainant when he came up with the Domain Name.”
“Rather he registered the Domain Name to host his music work, which is an obsession of his.”
The Respondent has held the Domain Name for many years and uses it primarily for email for family and some friends as well as for sharing personal music projects and field recordings that he makes, i.e. “AUDI-o related projects”.
While there has been little content on the Respondent’s Website, the Respondent has used various sub domains from the Domain Name such as “www.olsen.audicity.com”, which was used to share old family photos when the Respondent’s grandfather died, and “www.media.audicity.com” which was used to reference sound files.
“The Respondent has also used the Domain Name as a secondary email address that he directs mailing lists that he signs up to and an address he uses when he purchases software. The Respondent is not interested in selling the Domain Name, nor has he registered a large number of domain names for commercial purposes.”
Here is the finding of the panel:
“The Respondent is not affiliated with the Complainant in any way. He has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the AUDI Mark or a mark similar to the AUDI Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
The Respondent claims that he has used the Domain Name as an email for family and some friends as well as for sharing personal music projects. However the Respondent, in his communications with the Center, provided very limited evidence in support of its claims about how it was using the Domain Name.
Given the personal circumstances (mentioned in his email communication sent or copied to the Center) affecting the Respondent at the time it responded to the Complaint, it may be possible for the Respondent to provide additional evidence in support of its claims of use.
In such circumstances Panels often seek the provision of further evidence by the parties see Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025; Fratelli Carli S.p.A. v. Linda Norcross, WIPO Case No. D2006-0988.
Given the Panel’s finding under the bad faith element it has not been necessary to seek further evidence from the Respondent, nor reach a final conclusion under this ground.
C. Registered and Used in Bad Faith
There are no circumstances that indicate that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant.
The Domain Name has been registered for more than 10 years, and there is no evidence that the Respondent has ever attempted to sell the Domain Name.
Furthermore, when asked by the Complainant to transfer the Domain Name, the Respondent refused without making a counter-offer, citing the costs that the transfer would impose on him in changing his various email addresses.
“There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names (including the Domain Name) to prevent trade mark owners from registering a corresponding domain name. The Respondent admits to registering five or six additional domain names for personal purposes but there is no evidence that they reflect a trade mark or that the Respondent has used them to prevent an entity from reflecting its marks in a corresponding domain name.”
“There is no evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
“The Domain Name was first registered in 2001.
“Since that period there have been various images on Respondent’s Website, including an old photo of San Francisco, a photo of an electric guitar, a photo of an individual that is presumably Paul Steffan, and a blank page with the message “Somebody set us up the bomb!”.
“None of the uses of the Domain Name, either as a webpage or as an email address, appear to be for commercial gain.”
“The Panel finds that the Complainant’s arguments are insufficient to prove that the Respondent registered and used the Domain Name in bad faith.”
“The mere fact that the Respondent may have heard of the AUDI Mark at the time of registration does not automatically result in a finding of bad faith. ”
“The Domain Name was registered in 2001. ”
“The Complainant did not open up its first “audi city” dealership until 2012. ”
“There is no evidence that at the time of registration of the Domain Name, the combination of “audi” and “city” would ever be a combination that would ever be of interest to the Complainant or have any value to third parties. ”
“The suggestion implied in the Complaint that the Respondent (who, based on the evidence before the Panel, has never registered domain names to sell them), registered the Domain Name in anticipation that the Complainant would be interested in <audacity.com> or that the Domain Name would somehow have some value, and then held onto the Domain Name for 11 years until the Complainant decided to brand its dealerships “Audi City”, is simply implausible.”
“The Respondent claims that he did not consider the Complainant when registering the Domain Name. Rather, the reason he chose to register the Domain Name was as a play on the words “audacity” and “audio”. While the Respondent has not provided any evidence in support of his claimed reason, his claimed reason is considerably more plausible than the Complainant’s suggestion. ”
“On that basis alone it is difficult to find on the balance of probabilities that the Domain Name was registered in bad faith.”
“In the present case the Respondent has claimed that it has used the Domain Name for a number of purposes that are not visible on the Respondent’s Website. They include sharing old family photos, to reference his sound files and as an email address. The Respondent did not provide any evidence of such uses. However when examining all the circumstances of the case the matters listed below would suggest that, despite the fact that there has been limited active use of the Respondent’s Website, this is not a case where bad faith on the basis of passive holding should be found.”
“a) The Respondent has provided a plausible explanation of the reason he registered the Domain Name. Passive holding should only result in a finding of bad faith if the panel considers that the reason why a domain name was registered was for the purposes of cybersquatting. This is not the case in this proceeding.
“b) The Respondent’s claimed examples of use of the Domain Name, while not supported by evidence, are also plausible. It is not uncommon for individuals to register a domain name to be used as an e-mail address or for private purposes.
“c) The Respondent’s evidence of its use of the Domain Name is supported by the fact that the Domain Name has been registered for 11 years. Given the implausibility of the suggestion that the Respondent passively held the Domain Name for 11 years in case the Complainant started using “Audi City” as a dealership brand, the fact that the Respondent has continued to renew the registration of the Domain Name would suggest that it had been used by the Respondent during that time, possibly in the manner suggested in the Respondent’s e-mails.
“d) The Respondent has never hidden its identity (it has clearly provided contact details that were sufficient for notice of the Complaint to reach him in the present proceeding) and has provided an informal response to the present proceeding.
“e) There is no evidence that the Respondent is a domain name trader or has ever registered any other domain names for illegitimate commercial purposes.
“In relation to the Complainant’s argument that there is no conceivable plausible actual or contemplated active use of the Domain Name that does not infringe the Complainant’s rights, the Panel notes that the Respondent appears to have held and used the Domain Name for the past 10 years without apparently infringing the Complainant’s rights. The present stated use of the Domain Name (for email addresses and occasionally for the Respondent to share personal information and music using sub-domains) does not appear to infringe the Complainant’s trade marks though the Panel does not make a formal finding on that ground. There is no positive obligation on a domain name registrant to maintain an active website at the domain name. If the Complainant considers that the Respondent’s present (or future use) of the Domain Name infringes its trade mark rights then it is free to commence proceedings against the Respondent in a court of competent jurisdiction.”
“In this case the Respondent has provided a plausible reason for registering a Domain Name. It has maintained the registration for 11 years, and claims to have used the Domain Name extensively for personal purposes during that time. From 2001-2012 the term “Audi City” was not in common use and there was no reason for the Respondent to consider that the Complainant would find that combination of words valuable. The Respondent has never used the Domain Name for commercial purposes, nor has he attempted to sell the Domain Name.”
