WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection
Case No. D2008-0691
1. The Parties
The Complainant is Dr. Ing. h.c. F. Porsche AG, of Stuttgart Germany, represented by Lichtenstein, Körner & Partners, Germany.
The Respondent is Laksh Internet Solutions Private Limited / Privacy Protection, Mumbai, Maharashtra, of India; and Florida, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <prosche.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2008, naming Privacy Protection as the Respondent. On May 5, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On May 15, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response advising that the Respondent, Laksh Internet Solutions Private Limited, is listed as the registrant and providing the contact details. In response to a notification by the Center inviting the Complainant to amend the Complaint to add information about the newly identified registrant, the Complainant filed an amendment to the Complaint on May 19, 2008. Complainant then submitted a second amendment to the Complaint on May 26, 2008. The Center verified that the Complaint together with the amendments to 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 newly identified Respondent and the original Respondent of the Complaint, and the proceedings commenced on May 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2008.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on June 26, 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 has been a maker of sports cars for more than half a century, utilizing “Porsche” as the prominent and distinctive part in its trade name. Porsche cars and car parts are distributed and shipped worldwide, including India, through a network of official dealers. There are two Porsche dealerships in India, one in Mumbay, the other in New Delhi.
The Complainant owns numerous trademark registrations consisting of or incorporating the word “Porsche” some of which are:
German Trademark No. 643 195, registered August 26, 1953;
International Registration No. 179928, registered October 8, 1954;
Indian trademark No. 502424, registered December 16, 1988;
Indian trademark “Porsche shield” No. 1384360 registered September 13, 2005;
Indian trademark “Porsche” No. 1276898, registered 5th April 2004 (clothing, footwear, headgear included in class 25);
Indian trademark “Porsche” No. 502 423, registered January 14, 2000 (Cl. 14 watches, jewellery, keys, models of automobiles);
US Federal trademark “Porsche” No. 71-668978, registered October 1, 1956 (cars and parts thereof)
European Trademark Registration No. 000073098, priority date April 1, 1996, registered December 12, 2000 (various goods and services).
The complainant operates its principal web site at “www.porsche.com” which opens a gate to regional web sites designed to meet the needs of Internet users from specific countries or regions. The page serving users from India is located at “http://www.porsche.com/middle-east/”.
The Domain Name was registered on October 15, 2006.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, the Complainant alleges that:
The contested domain name is confusingly similar to the Complainant’s trade name and trademark PORSCHE.
The trademark and trade name PORSCHE is incorporated entirely in the contested domain name and only slightly altered to mislead users who have mistyped the name.
The fact that the disputed domain name was intentionally conceived as a typo-domain is highlighted by the links displayed on the parking website to which the domain name redirects.
With respect to paragraph 4(a)(ii) of the Policy, the Complainant alleges that:
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent is not using and has not made any preparations to use the Domain Name with a bona fide offering of goods or services.
There is not and has never been a business relationship between the parties.
The Respondent is not commonly known by the Domain Name.
The Respondent is not making non-commercial use of the Domain Name. Rather, the Respondent or its customers make profits by catching unsuspecting users and redirecting them to a parking website with paid links. It has constantly been held by panels that such use of a domain name can not constitute a legitimate interest.
With respect to paragraph 4(a)(iii) of the Policy, the Complainant alleges that:
The Respondent has registered and uses the disputed domain name in bad faith.
The Respondent has no legitimate interest in registering and using a domain name which so closely resembles a well known and prestigious trade name and trademark. The Respondent could not have been unaware of the Complainant’s trade name and trademark which is among the best known trademarks in the world.
It is the prevailing view among administrative panels that the use for parking websites is in bad faith because respondents earn money by directing users to commercial third party websites whose owners have to pay commission to take part in this kind of web advertising system. Thereby Respondent profits illegitimately from the good name and reputation of the Complainant.
With regard to the respondent, being an ICANN approved registrar with a responsibility to respect and carry out a proper whois service the Complainant also cites the Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311 - pornsche.com
“finally the Panel cannot disregard the fact that, since the kind of service offered by the Registrar and the Respondent, which allows registrants to obtain domain names with anonymous contact information, encourages Cybersquatting, the Respondent, being informed of a trademark violation, should use best endeavours to support the UDRP system and the injured trademark owners. On the contrary, besides the attempt of Cyberflying, the Respondent covered the true owner of the Domain Name, engaged in Cybersquatting, disclosing false contact details and thus obstructing the UDRP system.”
In addition, the respondent and its customer engage in a practice known as “typosquatting” which is also indicative of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Because the Respondent is in default, the Panel may draw negative inferences from the Respondent’s default (Rules, paragraph 14(b)). However, the Rules also require that the Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3).
6 Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a).)
A. Identical or Confusingly Similar
Complainant has used the PORSCHE trademark in connection with its famous sports cars for over 50 years and is the owner of numerous trademark registrations in many different countries some of which date as far back as August 26, 1953.1 Therefore, the Panel finds that Complainant has trademark rights in the PORSCHE mark.
The Panel also finds that the domain name <prosche.com> is likely to be confused with Complainant’s PORSCHE trademark because it incorporates Complainant’s entire trademark, the only exception being the misspelling (reversal of the letters “o” and “r”) in the Domain Name and the generic top-level domain “.com”. The addition of the generic top-level domain ".com" is without legal significance when comparing the domain name at issue to Complainant’s registered trademark. The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance.) Further, the reversal of the letters “o” and “r” in the disputed Domain Name <prosche.com> represents typosquatting. This close misspelling renders the Domain Name confusingly similar to Complainant’s trademark. Alta Vista Co. v. Yomtobian, WIPO Case No. D2000-0937 (domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA).
Therefore, this Panel finds that the domain name <prosche.com> is identical or confusingly similar to the trademark in which the Complainant has rights in line with violation of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.
With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the Domain Name. Further, Complainant has never licensed nor otherwise permitted the Respondent to use its PORSCHE trademark or to apply for any domain name incorporating the mark. There is no relationship between the Complainant and the Respondent.
With respect to 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate non-commercial or fair use of the Domain Name and has not used the Domain Name, or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services. Although the website currently provides links to hotels, Annex 13 to the Complaint contains not only links for PORSCHE car dealers but also links for Dodge dealers, Buick dealers, Pontiac dealers, Cadillac dealers, Mitsubishi and Saab dealers that can be said to be in competition with Complainant.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also 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 . The Panel finds that the aforementioned establishes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue. Moreover, the Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s allegations of bad faith are not contested. It is improbable that the Respondent was unaware of the Complainant’s trademark rights when it registered the disputed domain name on October 15, 2006.
In addition to the above, manifest typosquatting is sufficient to support an inference of bad faith shifting the burden to Respondent to offer contrary evidence. “The act of ‘typosquatting’ or registering a domain name that is a common misspelling of a mark in which the party has rights has often been recognized as evidence of bad faith registration and use. RX America, L.L.C. v. Tony Rodolakis, WIPO Case No. D2005-1190, Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107, citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011.
The Panel also finds that Respondent’s use of the domain name in conjunction with a web site that among other things, links not only to PORSCHE dealers but also to websites for dealers selling competing products such as CADILLAC and MITSUBISHI automobiles, is evidence of bad faith use and registration. Specifically, Respondent’s conduct is covered by Policy paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Finally, the Panel finds additional evidence of bad faith use and registration in Respondent’s unexplained failure to reveal its true identity after service of the UDRP complaint. When the Center sent its request for registrar verification, the Registrar did not respond by identifying the true registrant, instead, the Registrar identified another privacy service- Laksh Internet Solutions Private Limited. While panelists have often avoided drawing adverse inferences from a registrant’s use of privacy services, the circumstances here justify an adverse inference of bad faith use and registration of the domain name. While there may be a legitimate basis for withholding identifying information from the WhoIs database (such as guarding against identity theft and Spam), see WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975 (use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration service); Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861 (privacy services may be justified by the need to avoid spam and identity theft), those interests do not justify a registrant’s failure to reveal its identity in response to the Center’s request for verification in the context of a UDRP proceeding. Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321 (“Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.”); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (change of privacy service after notice of complaint indicative of bad faith).
For the reasons set forth above, the Panel finds that Respondent registered and used the disputed Domain Name in bad faith.
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, <prosche.com> be transferred to the Complainant.
Lawrence K. Nodine
Dated: July 16, 2008
1 German Trademark No. 643 195, registered 26th August, 1953;