Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partners, Germany.
Respondent is Ruslan Isakov of Staton Island, New York, United States of America.
The disputed domain name <porscheoffers.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008 naming the Respondents Domains By Proxy, Inc. and Ruslan Isakov. On October 30, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On October 31, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent Ruslan Isakov is listed as the registrant and providing the contact details and noting Domains By Proxy, Inc. is not the registrant of the Domain Name. Therefore the Panel considers Ruslan Isakov as the Respondent to the present proceedings. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 27, 2008.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 4, 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.
Complainant has been manufacturing for 60 years well-known sports cars under the trademark PORSCHE. Complainant, who is the owner of numerous trademarks consisting of or incorporating the word “Porsche”, has provided evidence of a number of trademark registrations for the word PORSCHE in many countries, covering inter alia a wide range of goods and services in connection with automobiles and parts thereof.
Complainant operates several websites. Its main websites can be found at “www.porsche.de” and “www.porsche.com”. The trademark and trade name “Porsche” enjoy a global reputation.
The Domain Name, which was registered on May 21, 2008, redirects to a parking web site “parked FREE, courtesy of GoDaddy.com”. This website displays “Sponsored Listings” with links to third party websites, “related searches” and advertising from the registrar.
Complainant claims that:
The Domain Name <porscheoffers.com> is confusingly similar to the aforementioned Complainant's trademarks, domain names and company name;
Respondent has no rights or legitimate interests in respect of the Domain Name;
Before the dispute, Respondent had not been using either the Domain Name in connection with a bona fide offering of goods and services;
At the time of the registration of the Domain Name, Respondent was not generally known under the Domain Name <porscheoffers.com>, nor did Respondent use the Domain Name for any legitimate, non commercial or fair purpose.
Respondent does not own any rights in the name or mark “porsche”. Complainant has not licensed or otherwise permitted Respondent to use its company name or trademarks or to apply for the registration of the Domain Name.
The Domain Name <porscheoffers.com> has been registered and is being used by Respondent in bad faith.
Respondent has registered the Domain Name primarily for the purpose of selling it as is shown by his sales offer just days after having registered the Domain Name;
Respondent knew Complainant's trademarks at the time of the registration of the Domain Name.
The use of a domain name for a parking site with commercial ads and sponsored links generating click through (pay-per-click) fees has been regarded as a case of bad faith under UDRP paragraph 4(b)(iv).
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain name registered by Respondent be transferred to Complainant:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Complainant has established that it has rights in the trademark PORSCHE in connection with a large range of goods and services, inter alia for automobiles and parts thereof.
The Panel notes that the addition of a generic term, i.e. “offers”, to the famous trademark PORSCHE, is not sufficient to avoid confusion. As has often been held by previous decisions, a domain name which includes as a whole or partially, a third parties' registered trademark is typically to be held/considered confusingly similar to it. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413 and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022.
Therefore, this Panel finds the Domain Name to be confusingly similar to a trademark in which Complainant has rights.
Complainant must show that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant may do so e.g., by establishing a prima facie case that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name e.g., by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to Respondent of the dispute, he used or made 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) that Respondent is commonly known by the Domain Name, even if he has not acquired any trademark or service mark rights; or
(iii) that Respondent intends to make 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.
Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorized Respondent to use Complainant's trademark. Respondent has not alleged any facts or elements to justify rights and/or legitimate interests in the disputed Domain Name. Respondent does not appear to make any legitimate use of the Domain Name for non commercial or otherwise fair use related activities. On the contrary, it appears that Respondent, while trying to sell the Domain Name, has used it to direct consumers to websites that offer services in competition with those offered by Complainant.
Therefore, the Panel considers that there is no evidence that Respondent has done anything that could be regarded as giving rise to a right or legitimate interest under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on the holder's web site or location.
Accordingly, for Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered and is being used in bad faith.
Considering the notoriety of Complainant's trademarks and in the absence of contrary evidence, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant's trademark when he registered the Domain Name. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant's trademark and activities at the time of the registration of a disputed domain name may be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, “It is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant. The respondent was not authorized by the complainant to use its mark nor the disputed domain names”).
As regards Respondent's use of the Domain Name, it appears that Respondent's website is used for a parking site with commercial ads and sponsored links redirecting also to websites of competitors of Complainant. By so deflecting Internet users, Respondent has shown bad faith registration and use of the Domain Name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy.
In addition, Respondent immediately after having registered the Domain Name informed Complainant, via email, that the Domain Name was on sale:
“Hello I would like to offer you opportunity to purchase a domain name PORSCHEOFFERS.COM I am the current owner of it and i would like to sell it, currently listing it on domain sell sites. Looking forward to work with you”.
In fact, a few days after, the Domain Name was placed on sale (at the starting price of USD 5 million dollars on the Marketplace of Moniker.com.
It is the Panel's opinion that this is further reason to draw on inference of bad faith.
Finally, Respondent has not denied Complainant's assertions of bad faith, has not given any justification for the registration of the Domain Name or substantiated or at least alleged any concurrent right or legitimate interest to the Domain Name which could give rise to good faith registration and use of the Domain Name.
Considering the foregoing, the Panel concludes that Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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, <porscheoffers.com> be transferred to Complainant.
Date: December 18, 2008