WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Web Services Pty
Case No. D2008-0620
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Web Services Pty, c/o Aditya Roshni, Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <ferdinandporsche.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2008. On April 22, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 22, 2008, eNom 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 May 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on June 2, 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
The Complainant is a prominent maker of sports cars marketed under the PORSCHE brand and name for more than half a century. The Complainant is the holder of valid and subsisting trademark registrations for PORSCHE and other PORSCHE-formative marks in numerous countries and jurisdictions around the world, including the United States of America (“United States”), the European Union, Germany and India.1 The Complainant’s cars and car parts are sold worldwide through an official network of dealers, and the Complainant maintains an official website at “www.porsche.com”.
The Respondent registered the disputed domain name <ferdinandporsche.com> on November 2, 2005.2 The disputed domain name directs Internet traffic to a parking website with what appear to be pay-per-click advertising links to third-party commercial websites, some of which offer goods or services in direct competition with the Complainant. Prior to initiating this proceeding, the Complainant on November 21, 2007, sent a cease and desist letter to the Respondent, to which the Respondent did not respond.
5. Parties’ Contentions
The Complainant contends that the disputed domain name, which incorporates its PORSCHE mark in its entirety, is confusingly similar to the Complainant’s mark. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been authorized to use the Complainant’s mark or to register domain names reflecting that mark, nor has the Respondent been commonly known by the disputed domain name.
The Complainant further asserts that the Respondent has a history of registering third-party trademarks to divert Internet traffic to pay-per-click parking websites, citing several prior UDRP panel decisions finding the Respondent to have acted in bad faith, including F. Hoffmann-La Roche AG v. Domain Admin/ Aditya Roshni/ Web Services Pty, WIPO Case No. D2007-1595, Newmont Mining Corporation v. Web Services Pty c/o Aditya Roshni, NAF Claim Number: 1106525, and Zappos.com, Inc. v. Web Services Pty c/o Aditya Roshni, NAF Claim Number: 1138443. The Complainant concludes that the Respondent has engaged in a pattern of conduct involving abusive domain name registrations sufficient to establish bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Complainant has presented uncontested evidence of its registration and use of the PORSCHE mark in the United States and in other countries around the world, including India, where the Respondent is said to be domiciled. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Applying this standard, the Panel finds that the disputed domain name <ferdinandporsche.com> is confusingly similar to the Complainant’s PORSCHE mark. The disputed domain name incorporates the Complainant’s mark its entirety. The disputed domain name also is identical to the name of the Complainant’s founder, Ferdinand Porsche, and as such the inclusion of “Ferdinand” in the domain name does nothing to dispel its confusing similarity with the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant’s mark or to appropriate the mark for use with domain names. The disputed domain name, which incorporates the Complainant’s mark in its entirety, is being used by the Respondent to divert Internet users to a website containing what appear to be pay-per-click advertising links to third party commercial websites, some offering products and services that compete with those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to her of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if she has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.3 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy.
The Respondent has used and continues to use the disputed domain name in connection with a website containing advertising links to other commercial websites. These links serve no apparent purpose other than the generation of pay-per-click revenue. The deliberate registration and use of a domain name that is identical or confusingly similar to the Complainant’s widely known mark to generate advertising revenue does not constitute use of the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Nor, under such circumstances, can the Respondent assert that a noncommercial or fair use of the domain name is being made under paragraph 4(c)(iii). See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the totality of circumstances demonstrates the Respondent’s bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii). The record before this Panel unquestionably establishes that the Respondent has engaged in a pattern of conduct involving abusive domain name registrations. Even in the absence of such a prior pattern of bad faith conduct, however, the circumstances of this case indicate that the Respondent was well aware of the Complainant and its PORSCHE mark, and that the Respondent registered the disputed domain name with the bad faith intent to profit from and exploit the Complainant’s mark by diverting Internet traffic to the Respondent’s website to generate advertising revenue.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 name, <ferdinandporsche.com> be transferred to the Complainant.
William R. Towns
Dated: June 16, 2008
1 Complaint, Annexes 3 through 10.
2 Ferdinand Porsche is the name of the Complainant’s founder. See Complaint, Annex 2.
3 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., DoThe Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.