Complainant is Dr. Ing. h.c. F. Porsche AG of Stuttgart, Germany, represented by Lichtenstein, Körner & Partner, Germany.
Respondent is Direct Privacy ID of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <porscheclubkuwait.com> and <porscheclubkuwait.net> (“the Domain Names”) are registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 5, 2010. On January 6, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Names. On January 11, 2010 and January 12, 2010 Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 8, 2010.
The Center appointed Jacques de Werra as the sole panelist in this matter on February 11, 2010. 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 80 years well-known sports cars under the trademark PORSCHE. Complainant has provided evidence of a number of trademark registrations for PORSCHE in many countries, covering a wide range of goods and services in connection with automobiles and parts thereof, including the Kuwait Trademark No. 35471 registered on June 6, 1999, the US Trademark Reg. No. 618933, registered on January 10, 1956, and the International trademark No. 179928 registered on October 8, 1954 (“the Trademark”).
Complainant operates its main corporate website at “www.porsche.com” which links to its national corporate websites.
Complainant's cars and car parts are distributed and shipped worldwide, in particular to the United States and the Middle East including Kuwait, through a network of official dealers.
Complainant also maintains a network of certified Porsche Clubs which by license agreement enjoy privileges including the use of the Trademark. Complainant entered into an agreement (entitled “approval as an authorized Porsche Club and License Agreement”) with Porsche Club Kuwait in May 2005 defining – among other elements – the conditions under which Complainant's Trademark and logos could be used by the club, including on the Internet (i.e. in a domain name). This agreement was signed by Mr. Saud Al Tawash, who was then the president of the Porsche club Kuwait.
The Domain Name <porscheclubkuwait.net> was registered on March 5, 2005 by a certain “Saud Altawash” whose name closely resembles the one of the former president official Porsche club Kuwait. At that time, one of the Domain Names (i.e. <porscheclubkuwait.com>) was actively used in connection with the club's activities without the approval of Complainant. When he left his position as club president, Mr. Al Tawash was requested by Complainant (by a letter dated July 20, 2008) to take the website to which the Domain Name <porscheclubkuwait.com> resolved offline, or to transfer the relevant domain name to it, which he did not do.
The Domain Names were subsequently transferred to Respondent (after February 2009).
The Domain Names are used as landing pages in the course of a domain name parking program.
Complainant first claims that the Domain Names are confusingly similar to Complainant's Trademark, whereby the word element “clubkuwait” creates the impression that the Domain Names would be connected to the officially licensed Kuwait Porsche club and does therefore nothing to distinguish the Domain Names from the Trademark, but rather adds to the confusion.
Complainant further alleges that Respondent has no right or legitimate interest in respect of the Domain Names because there is no use nor any preparations to use them with a bona fide offering of goods or services. There is further not and has never been a business relationship between the parties. Respondent is further not commonly known by the Domain Names and Respondent is not making noncommercial use of the Domain Names but rather earning money from advertising.
Complainant finally claims that Respondent has no legitimate interest in registering and using Domain Names which incorporate a well-known and prestigious trade name and trademark and indicates an official Porsche club. This is so because the registration and use of a domain name for a parking website with paid links constitutes bad faith, even if the links are provided by the registrar. Complainant also claims that even if Mr. Al Tawash had not transferred the Domain Names, the circumstances would also support the finding of bad faith because he registered the Domain Names in his own name and on his own behalf, instead of on behalf and for the benefit of the official Kuwait Porsche club and because he used the Domain Names without consent for a website that appears to be an official club website which actually it is not.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy provides that the Complainant shall prove three elements for obtaining that the Domain Names be transferred to Complainant:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Complainant has established that it has rights in the Trademark in connection with a large range of goods and services, inter alia for automobiles and parts thereof.
The Panel holds that the addition of generic terms to the Trademark, i.e. “club” and “kuwait”, is not sufficient to avoid confusion. This is so because these terms are used by Complainant in connection with existing activities and entities (i.e. local Porsche clubs, such as the Porsche Club Kuwait), so that the use of such terms in the Domain Names rather increases the risk of confusion.
Therefore, the Panel finds the Domain Names to be confusingly similar to the Trademark in which Complainant has rights.
Complainant must show that Respondent has no rights or legitimate interests in respect of the Domain Names. Complainant may do so by establishing a prima facie case that Respondent lacks rights or legitimate interests. Respondent does not bear the burden of proof, but may establish a right or legitimate interest in the Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to Respondent of the dispute, it used or made demonstrable preparations to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) that Respondent is commonly known by the Domain Names, even if it 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 Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, Complainant has established that Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorized Respondent to use Complainant's Trademark (this is confirmed by the fact that Complainant expressly requested the previous owner of one of the Domain Names to take the website to which such Domain Name resolved offline or transfer it to Complainant).
The Panel also notes that the use of the Domain Names in the framework of domain name parking programs does not create a right or legitimate interest of Respondent on the Domain Names under paragraph 4(c) of the Policy.
The Panel further acknowledges that Respondent is not commonly known by the Domain Names.
Given that Respondent has not filed a Response in these proceedings, it has not alleged any facts or elements which would potentially justify its rights and/or legitimate interests in the Domain Names.
On this basis, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names and that Respondent has not established any rights to or any legitimate interests in the Domain Names.
Accordingly, the Panel finds that Complainant has satisfied the condition set forth under 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 Names 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 Names 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 Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the holder's website or location.
Accordingly, for Complainant to succeed, the Panel must be satisfied that the Domain Names have been registered and are being used in bad faith.
Considering the undisputed notoriety of Complainant's Trademark and in the absence of contrary evidence, the Panel finds that Respondent had actual knowledge of Complainant's Trademark when the Domain Names were registered. This is particularly apparent in view of the uncontradicted explanations provided by Complainant about the registration of one of the Domain Names which was made by the former president of the Porsche Club Kuwait in his own name.
In addition, Respondent's use of the Domain Names in connection with parking sites providing for commercial ads and sponsored links constitute a bad faith use. See, e.g., Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462.
Respondent has furthermore neither rejected Complainant's assertions of bad faith, nor provided any justification for the registration of the Domain Names or substantiated or at least alleged any right or legitimate interest to the Domain Names which could give rise to a good faith registration and use of the Domain Names.
Considering the foregoing, the Panel concludes that Respondent registered and is using the Domain Names 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 names <porscheclubkuwait.com> and <porscheclubkuwait.net> be transferred to Complainant.
Jacques de Werra
Dated: February 25, 2010